SIMON Technologies LLC

Patent Trials and Appeals Board

May 14, 2021

2020006164 (P.T.A.B. May. 14, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/726,075 05/29/2015 Jason Broder SIMN01-00002 9464
23990 7590 05/14/2021
DOCKET CLERK
P.O. DRAWER 800889
DALLAS, TX 75380
EXAMINER
MADAMBA, CLIFFORD B
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
05/14/2021 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):
munckwilson@gmail.com
patents@munckwilson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON BRODER
Appeal 2020-006164
Application 14/726,075
Technology Center 3600
Before JOHN A. JEFFERY, LARRY J. HUME, and BETH Z. SHAW,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1, 2, and 4–11, which are all claims
pending in the application. Appellant has canceled claims 3 and 12, and has
withdrawn claims 13–16 from consideration. See Final Act. 2. 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. Appellant identifies the real party in interest as Simon Technologies,
LLC. Appeal Br. 2.
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STATEMENT OF THE CASE2
The claims are directed to an electronic platform for managing
investment products. See Spec. (Title). In particular, Appellant’s disclosed
embodiments and claimed invention relate “to systems, methods, and
devices for managing investment products, including customizable
structured products requiring real time certification, education, market
factors and market builders.” Spec. ¶ 2.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
Appeal (emphasis and formatting added to contested prior-art limitations):
1. An electronic platform residing at one or more
servers that communicate with client devices associated with
one or more users of the electronic platform, the electronic
platform comprising:
a product generation system configured to generate
tradable investment products in response to product request
information received from a user of the electronic platform,
wherein to generate the tradable investment products, the
product generation system is configured to:
decompose each tradable investment product into two or
more priced components, each of the priced components having
a different maturity, generate pricing tables for each of the two
or more priced components, pre-fetch, from a third party market
server before a user input by the user of the electronic platform,
pricing information for the two or more priced components

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
June 1, 2020); Reply Brief (“Reply Br.,” filed Aug. 26, 2020); Examiner’s
Answer (“Ans.,” mailed June 26, 2020); Final Office Action (“Final Act.,”
mailed Dec. 30, 2019); and the original Specification (“Spec.,” filed
May 29, 2015) (claiming benefit of US 62/005,869, filed May 30, 2014).
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based on a variety of deal terms, receive the user input, the user
input identifying a set of the deal terms to be applied to the two
or more priced components, interpolate the pricing tables based
on the set of the deal terms, and determine a price for each
tradable investment product based on the interpolated pricing
tables;
a product education system configured to provide online
courses associated with the tradable investment products to the
user of the electronic platform after determining that the user of
the electronic platform is not certified to trade investment
products generated by the product generation system, the
product education system comprising a management dashboard
configured to receive manager approval or selection of the
online courses for the tradable investment products,
the product education system further configured to
display, in response to certification of the user to trade the
tradable investment products, a control for user navigation to
the product generation system, wherein the control when
actuated causes the electronic platform to navigate the user
from the product education system to the product generation
system; and
a product exchange system configured to:
establish an information exchange environment between
the user of the electronic platform and other users of the
electronic platform, receive a selection of a first tradable
investment product from the user of the electronic platform,
perform investment backtesting and scenario analysis on the
first tradable investment product, and display results of the
investment backtesting to the user, the results showing how the
first tradable investment product would have performed in a
theoretical market scenario, wherein the product education
system is further configured to restrict the user from trading the
first tradable investment product using the product exchange
system when the user does not pass at least one online course
associated with the first tradable investment product.
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REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Koskinen US 6,062,862 May 16, 2000
Wood et al. (“Wood”) US 6,609,198 B1 Aug. 19, 2003
Favvas US 2010/0070430 A1 Mar. 18, 2010
Mondal US 2011/0270778 A1 Nov. 3, 2011
Packles et al. (“Packles”) US 2013/0144807 A1 June 6, 2013
REJECTIONS
R1. Claims 1, 2, and 4–11 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to an abstract idea without
significantly more. Final Act. 7.
R2. Claims 1, 2, 4, 5, 7, 8, 10, and 11 stand rejected under AIA 35
U.S.C. § 103 as being unpatentable over the combination of Packles, Favvas,
Wood, and Koskinen. Final Act. 11.3
R3. Claims 6 and 9 stand rejected under AIA 35 U.S.C. § 103 as
being unpatentable over the combination of Packles, Favvas, Wood,
Koskinen, and Mondal. Final Act. 18.

3 We note the Examiner incorrectly identified the rejection as being under
pre-AIA 35 U.S.C. § 103(a). See generally Final Act. However, based upon
the earliest effective filing date (May 30, 2014), we determine this
application is subject to the provisions of the AIA, and view this oversight as
harmless error.
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CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 12–33) 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, 2, and 4–11 on the basis
of representative claim 14; and we decide the appeal of obviousness
Rejection R2 of claims 1, 2, 4, 5, 7, 8, 10, and 11 on the basis of
representative claim 1.
Remaining claims 6 and 9 in obviousness Rejection R3, not argued
separately, stand or fall with the respective independent claim from which
they depend.5
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).
Based upon our review of the record, we find a preponderance of the
evidence supports particular arguments advanced by Appellant with respect

4 We address what appears to be separate arguments for dependent claims
rejected under § 101, infra. See Appeal Br. 22–27.
5 “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
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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to subject matter eligibility Rejection R1 of claims 1, 2, and 4–11, for the
specific reasons discussed below.
However, we disagree with Appellant’s arguments with respect to
obviousness Rejections R2 and R3 of claims 1, 2, and 4–11, 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 claim 1 for emphasis as
follows.
1. § 101 Rejection R1 of Claims 1, 2, 4–11
Issue 1
Appellant argues (Appeal Br. 12–27; Reply Br. 2–8) 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?
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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. § 101.6
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

6 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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economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611).
Under this guidance, we must therefore ensure at step one that we articulate
what 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
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.7 The Manual of
Patent Examining Procedure (“MPEP”) now incorporates this revised

7 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter “Revised Guidance”) (https://www.govinfo.gov/
content/pkg/FR-2019-01-07/pdf/2018-28282.pdf). In response to formal
public comments, the Office issued further guidance on October 17, 2019,
clarifying the Revised Guidance. USPTO, October 2019 Update: Subject
Matter Eligibility (the “October 2019 Update”). “All USPTO personnel are,
as a matter of internal agency management, expected to follow the
guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1.
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guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev.
June 2020).8
Under MPEP § 2106, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One,” referred
to herein as “Step 2A(i)”); and
(2) additional elements that integrate the judicial
exception into a practical application (“Step 2A, Prong Two,”
referred to herein as “Step 2A(ii)”).9
MPEP § 2106.04(a)) and § 2106.04(d).
Under this 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.10

8 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
9 “Examiners evaluate integration into a practical application by:
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (2) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application, using one or more of the
considerations introduced in subsection I supra, and discussed in more detail
in MPEP §§ 2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and
2106.05(e) through (h).” MPEP § 2106.04(d)II.
10 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
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application,11 do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field; 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.12
MPEP § 2106.05(d).
Step 1 – Statutory Category
Claim 1, as an electronic platform (machine or manufacture) 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.

the MPEP for analyzing the claim should be followed. See MPEP
§ 2106.04(a)(3)(“Tentative Abstract Ideas”).
11 This corresponds to Alice part one where it is determined whether the
claim is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim
is “not directed to an abstract idea under step one of the Alice analysis, we
do not need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1339 (Fed. Cir. 2016).
12 Items (3) and (4) correspond to Alice part two where it is determined
whether the claim “contains an ‘inventive concept’ sufficient to ‘transform’
the claimed abstract idea into a patent-eligible application” (Alice, 573 U.S.
at 221) and 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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Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 “as drafted . . . under its
broadest reasonable interpretation, covers certain methods of organizing
human activity — fundamental economic principles, practices or concepts;
sales activity; following set of instructions; commercial or legal interactions
(agreements in the form of contracts; advertising; marketing; sales activities
or behaviors; business relations); managing personal behavior of
relationships or interactions between people (including social activities,
teachings, following rules or instructions.” Final Act. 9. “Because the claim
is directed to the performance of financial transactions, it is thus directed to
an abstract idea.” Id.
We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate 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. The Specification discloses “[t]his
application is related to electronic platforms, and, more specifically, to
systems, methods, and devices for managing investment products, including
customizable structured products requiring real time certification, education,
market factors and market builders.” Spec. ¶ 2.
Appellant’s Abstract describes the invention as “identifying
customized structured investment products, certifying users to use and sell
such customized structured products, selling and trading such customized
structured products, and monitoring the performance of the customized
structured products.” Spec. 66 (Abstract).
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We determine that claim 1, overall, recites certain methods of
organizing human activity, i.e., a fundamental economic practice that may
also be performed by pen and paper. This type of activity, i.e., generating
financial products as recited in limitations L1 through L5, 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[, 409
U.S. 63 (1972)].”).13
Thus, under Step 2A(i), we agree with the Examiner that claim 1’s
electronic platform for financial product generation and education recites,
overall, a fundamental economic practice, and thus is an abstract idea.
In TABLE I below, we identify in italics the specific claim limitations
in claim 1 that we conclude recite an abstract idea. We additionally identify

13 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
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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in bold the additional (non-abstract) claim limitations that are generic
computer components and techniques, and underline limitations representing
extra or post-solution activity:
TABLE I
Independent Claim 1 Revised Guidance
An electronic platform residing
at one or more servers that
communicate with client devices
associated with one or more
users of the electronic platform,
the electronic platform
comprising:
An electronic platform (device or
machine) is a statutory subject matter
class. See 35 U.S.C. § 101 (“Whoever
invents or discovers any new and
useful process, machine, manufacture,
or composition of matter, or any new
and useful improvement thereof, may
obtain a patent therefor, subject to the
conditions and requirements of this
title.”).
[L1] a product generation
system configured to

[L1a] generate tradable
investment products in response
to product request information
received from a user of the
electronic platform,
wherein to generate the tradable
investment products,
As claimed and described in the
Specification, a product generation
system represents general computer
components and techniques. See Spec.
¶ 101.
Generating tradeable investment
products is an abstract idea, i.e., certain
methods of organizing human activity
including commercial interactions
and/or marketing and sales activities.
Alternatively, it is a fundamental
economic practice. See MPEP
2106.04(a)(2)(II)(B); Revised
Guidance 52.
the product generation system
is configured to:
[L2a] decompose each tradable
investment product into two or
more priced components,

Decomposing an investment product
into priced component parts is an
abstract idea, i.e., certain methods of
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Independent Claim 1 Revised Guidance
each of the priced components
having a different maturity,

[L2b] generate pricing tables for
each of the two or more priced
components,

[L2c] pre-fetch, from [L2d] a
third party market server
before a user input by the user of
the electronic platform, pricing
information for the two or more
priced components based on a
variety of deal terms,

[L2e] receive the user input, the
user input identifying a set of the
deal terms to be applied to the
two or more priced components,
[L2f] interpolate the pricing
tables based on the set of the
deal terms, and

[L2g] determine a price for each
tradable investment product
based on the interpolated pricing
tables;
organizing human activity including
commercial interactions and/or
marketing and sales activities.
Alternatively, it is a fundamental
economic practice. See MPEP
2106.04(a)(2)(II)(B); Revised
Guidance 52.
Generating a pricing table is an abstract
idea, i.e., “an observation, evaluation,
judgment, opinion” which could be
performed as a mental process. See
MPEP § 2106.04(a)(2)(III)(A).
Receiving or pre-fetching pricing
information, i.e., data gathering, is
insignificant extra-solution activity.
Revised Guidance 55, n.31; see also
MPEP § 2106.05(g).
As claimed and disclosed in the
Specification, a third party market
server represents generic computer
components. See Spec. ¶¶ 140, 141.
Receiving user input, i.e., data
gathering, is insignificant extra-
solution activity. Revised Guidance 55,
n.31; see also MPEP § 2106.05(g).
Interpolating data, e.g., interpolating
pricing tables, is an abstract idea, i.e.,
“an observation, evaluation, judgment,
opinion” which could be performed as
a mental process. See MPEP
§ 2106.04(a)(2)(III)(A).
Determining a price for tradeable
investment products is an abstract idea,
i.e., certain methods of organizing
human activity including commercial
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Independent Claim 1 Revised Guidance
interactions and/or marketing and sales
activities. Alternatively, it is a
fundamental economic practice. See
MPEP 2106.04(a)(2)(II)(B); Revised
Guidance 52.
[L3] a product education
system configured to

[L3a] provide online courses
associated with the tradable
investment products to the user
of the electronic platform

[L3b] after determining that the
user of the electronic platform
is not certified to trade
investment products generated
by the product generation
system,
the product education system
comprising
[L3c] a management
dashboard configured to

[L3d] receive manager approval
or selection of the online courses
for the tradable investment
products,
As claimed and described in the
Specification, a product education
system represents general computer
components and techniques. See Spec.
¶ 72.
Providing courses associated with the
products to a user is insignificant extra-
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)

Determining certification of a user to
trade particular investment products is
an abstract idea, i.e., “an observation,
evaluation, judgment, opinion” which
could be performed as a mental
process. See MPEP
§ 2106.04(a)(2)(III)(A).

As claimed, a management dashboard
represents generic computer
display/interface functionality. See
Spec. ¶ 94, Fig. 5F.
Receiving user input, i.e., receiving
manager approval or selection of
courses, is insignificant extra-solution
activity. Revised Guidance 55, n.31;
see also MPEP § 2106.05(g).
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Independent Claim 1 Revised Guidance
[L4] the product education
system further configured to
display, in response to
certification of the user to trade
the tradable investment products,
a control for user navigation to
the product generation system,
wherein the control when
actuated causes the electronic
platform to navigate the user
from the product education
system to the product generation
system; and
See Step 2A(ii) analysis, infra.
[L5] a product exchange
system configured to:
[L5a] establish an information
exchange environment between
the user of the electronic
platform and other users of the
electronic platform,

[L5b] receive a selection of a
first tradable investment product
from the user of the electronic
platform,

[L5c] perform investment
backtesting and scenario
analysis on the first tradable
investment product, and

Establishing information exchange,
e.g., between users, is insignificant
extra-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).
Receiving user input or data gathering,
i.e., receiving a selection from a user, is
insignificant extra-solution activity.
Revised Guidance 55, n.31; see also
MPEP § 2106.05(g).
Performing backtesting and scenario
analysis of an investment product is
an abstract idea, i.e., “an observation,
evaluation, judgment, opinion” which
could be performed as a mental
process. See MPEP
§ 2106.04(a)(2)(III)(A).
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Independent Claim 1 Revised Guidance
[L5d] display results of the
investment backtesting to the
user, the results showing how the
first tradable investment product
would have performed in a
theoretical market scenario,
wherein the product education
system is further configured to

[L5e] restrict the user from
trading the first tradable
investment product using the
product exchange system when
the user does not pass at least
one online course associated
with the first tradable investment
product.
Displaying results, e.g., displaying
results of investment backtesting, 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).

Restricting a user from trading under
certain circumstances, e.g., if the user
lacks particular training, is an abstract
idea, i.e., certain methods of
organizing human activity including
commercial interactions and/or
marketing and sales activities.
Alternatively, it is a fundamental
economic practice. See MPEP
2106.04(a)(2)(II)(B); Revised
Guidance 52.
Claims App.
Under the broadest reasonable interpretation standard,14 we conclude
limitations L1 through L5, when considered as a whole, recite steps that

14 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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would ordinarily occur when carrying out certain methods of organizing
human activity in the form of generating tradeable investment products, i.e.,
performing a fundamental economic practice. See Final Act. 9. For
example, backtesting investment products and training securities advisors to
deal in such investment products are operations that generally occur when
generating investment products for a particular consumer.
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 L2c (“pre-fetch . . .
pricing information”), L2e (“receive the user input”), and L5b (“receive a
selection of a first tradable investment product from the user”) 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).
We also find limitations L3a (“provide . . . courses associated with the
tradable investment products”), L3d (“receive manager approval or selection
of the . . . courses”), L5a (“establish an information exchange environment
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between the user of the electronic platform and other users of the electronic
platform”), and L5d (“display results of the investment backtesting to the
user”) 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).
We further find, as claimed, limitations L1 (“a product generation
system”), L2d (“a third party market server”), L3 (“a product education
system”), and L3c (“a management dashboard”) recite generic computer
components and functionality. On this record, we are of the view that
Appellant’s claims do not operate the recited generic computer components
in an unconventional manner to achieve an improvement in computer
functionality. See MPEP § 2106.05(a).
In addition to the abstract, extra solution activity, or generic steps
recited in limitations L1–L3 and L5 identified in Step 2A(i), supra, claim 1
further recites limitation L4, i.e., “the product education system further
configured to display, in response to certification of the user to trade the
tradable investment products, a control for user navigation to the product
generation system, wherein the control when actuated causes the electronic
platform to navigate the user from the product education system to the
product generation system.”
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For the reasons discussed below, we conclude limitation L4 integrates
the abstract idea of generating financial products into a practical application
as determined under at least one of the MPEP sections cited above.15
Appellant’s Specification discloses:
For example, in some embodiments, the product generation
system 144 may build tradable investment products for the user
after the user of the electronic platform 140 has completed at
least one online course associated with the tradable investment
products provided by the product education system 142.
Following the example, the product education system 142 may
provide online courses associated with tradable investment
products to the user of the electronic platform 140 after
determining the user of the electronic platform 140 is not
certified to trade investment products generated by the product
generation system 144.
Spec. ¶ 61.
Appellant argues:
At least the features of Claim l emphasized above
provide a product education system that manages a user’s
ability to trade an investment product, such as by managing
trading that is dependent on the user’s certification progress on
the investment product. When the user is certified, the
electronic platform can navigate the user to the product
exchange system directly from the product education system to
begin trading. This clearly represent a practical application that
imposes a meaningful limit on the judicial exception, such that
the claims are more than a drafting effort designed to
monopolize the judicial exception.
Appeal Br. 16–17.

15 See, e.g., MPEP § 2106.05(a) “Improvements to the Functioning of a
Computer or To Any Other Technology or Technical Field,” and
§ 2106.05(e) “Other Meaningful Limitations.”
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We find Appellant’s argument persuasive that limitation L4, i.e., “the
product education system further configured to display, in response to
certification of the user to trade the tradable investment products, a control
for user navigation to the product generation system, wherein the control
when actuated causes the electronic platform to navigate the user from the
product education system to the product generation system” provides
improvements to the underlying technology or technical field, namely,
systems for managing investment products, including customizable
structured products requiring real time certification and education. See
MPEP § 2106.05(a) or, alternatively, § 2106.05(e) “Other Meaningful
Limitations.” Because the claims are directed to a patent-eligible concept,
this concludes the patent-eligibility inquiry.
Therefore, based upon the findings and legal conclusions above, on
this record and in consideration of the Revised Guidance, we are persuaded
the claims are directed to patent-eligible subject matter, such that we do not
sustain the § 101 rejection of claim 1, and grouped claims 2 and 4–11 which
are of commensurate scope, and which stand therewith. See Claim
Grouping, supra.
2. § 103 Rejection R2 of Claims 1, 2, 4, 5, 7, 8, 10, 11
Issue 2
Appellant argues (Appeal Br. 28–31; Reply Br. 8–10) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103 as being obvious over the
combination of Packles, Favvas, Wood, and Koskinen is in error. These
contentions present us with the following issue:
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Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a]n electronic platform residing at one or more servers that
communicate with client devices associated with one or more users of the
electronic platform,” wherein the electronic platform includes, inter alia, “a
product education system . . . further configured to display, in response to
certification of the user to trade the tradable investment products, a control
for user navigation to the product generation system, wherein the control
when actuated causes the electronic platform to navigate the user from the
product education system to the product generation system,” as recited in
claim 1?
Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
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.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007).
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
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likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
Analysis
Appellant contends none of the references teach or suggest:
a product education system that, in response to certification of a
user to trade tradable investment products, displays a control
for user navigation to a product generation system, wherein the
control when actuated causes an electronic platform to navigate
the user from the product education system to the product
generation system. Thus, the rejection is legally and factually
deficient.
Appeal Br. 30. Appellant alleges the portion of Wood relied upon by the
Examiner “merely describes an authentication scheme that uses credentials
for a log-on service” (id.), but says nothing about a product education
system, a product generation system, education or training in general,
certification of a user to trade, tradable investment products, displaying a
control for user navigation, actuation of a control, or navigating of a user
from one system to another system. Id. at 30–31.
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While Wood may generally teach an authentication scheme that
uses credentials for a log-on service, such a general disclosure
is clearly not enough to teach or suggest a product education
system that, in response to certification of a user to trade
tradable investment products, displays a control for user
navigation to a product generation system, wherein the control
when actuated causes an electronic platform to navigate the
user from the product education system to the product
generation system. Thus, Wood fails to cure the deficiencies of
Packles with respect to these features.
Appeal Br. 31.
We are not persuaded by Appellant’s argument and agree with the
Examiner’s finding (Final Act. 12–15) that the combination of Packles,
Koskinen, and Wood teach or suggest the disputed limitations of claim 1
because the product education system is taught by Koskinen (Final Act. 13–
14, citing Koskinen 1:63–67; 2:1–3; 4:10–11; 6:21–24, 28–37; 7:13–15, 47–
49), the certification and navigation functions are taught or suggested by
Wood (Ans. 12–13, citing Wood 2:35–41, 4:5–8, 5:27–30, 44–49, 52–54;
21:9–17), and the product generation system and tradable investment
products are taught or suggested by Packles. Final Act. 12 (citing Packles
¶¶ 2, 4, 22–23, 54, 65). Furthermore, Appellant does not present arguments
against the Examiner’s stated motivation to combine. See Final Act. 13, 14,
15, 16).
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 limitation of claim 1, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 1, and grouped
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claims 2, 4, 5, 7, 8, 10, and 11 which fall therewith. See Claim Grouping,
supra.
3. § 103 Rejection R3 of Claims 6 and 9
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R3 of claims 6 and 9 under § 103 (see Appeal
Br. 32), we sustain the Examiner’s rejection of these claims. Arguments not
made are waived.16
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–10) not in response to a shift in the Examiner’s position
in the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
Appellant has persuasively argued that claims 1, 2, and 4–11 are patent
eligible under 35 U.S.C. § 101, and we do not sustain the rejection.
(2) Appellant has not persuasively argued that the Examiner erred
with respect to obviousness Rejections R2 and R3 of claims 1, 2, and 4–11

16 Appellant merely argues, “[c]laim 6 depends from Claim l. Claim 9
depends from Claim 8. As shown above, Claims l and 8 are patentable. As a
result, Claims 6 and 9 are patentable at a minimum due to their dependence
from allowable base claims.” Appeal Br. 32.
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under 35 U.S.C. § 103 over the cited prior art combinations of record, and
we sustain the rejections.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1).
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4–11 101 Eligibility 1, 2, 4–11
1, 2, 4, 5, 7,
8, 10, 11
103 Packles, Favvas,
Wood, Koskinen
1, 2, 4, 5, 7,
8, 10, 11

6, 9 103 Packles, Favvas,
Wood, Koskinen,
Mondal
6, 9
Overall
Outcome
1, 2, 4–11
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