Yossef Brandes et al.

Patent Trials and Appeals Board

Feb 4, 2020

13185929 - (D) (P.T.A.B. Feb. 4, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/185,929 07/19/2011 Yossef BRANDES 107945.000108 3293
145584 7590 02/04/2020
Prince Lobel Tye LLP
One International Place
Suite 3700
Boston, MA 02110
EXAMINER
BARTLEY, KENNETH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
02/04/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@princelobel.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YOSSEF BRANDES, IAN DOMOWITZ,
MILAN BORKOVEC, JIAN YANG, ROBERT D. SINCLAIR,
and VITALY SERBIN

Appeal 2018-006345
Application 13/185,929
Technology Center 3600
____________

Before PHILIP J. HOFFMANN, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.

MURPHY, Administrative Patent Judge.

DECISION ON APPEAL
The Appellant1 appeals the final rejection of claims 15–34, 36, and 37
under 35 U.S.C. § 101. We AFFIRM.2

1 The Appellant is the “applicant” (e.g., “the inventor or all of the joint
inventors”) as defined in 37 C.F.R. § 1.42. “[T]he real party in interest is
ITG SOFTWARE SOLUTIONS, INC.” (Appeal Br. 2.)
2 We have jurisdiction over this appeal under 35 U.S.C. § 134 and
35 U.S.C. § 6(b).
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BACKGROUND
The Appellant provides a method that “relates to investment portfolio
management.” (Spec. ¶ 2.)
An investment “portfolio” can be defined as “[a] set of investments
and their monetary values,” and these investments can each be a “security.”
(Snyder3 ¶¶ 65, 66.) It follows, therefore, that a trader (i.e., a person making
market trades) would want to know what securities are in an investment
portfolio, along with helpful financial information about each security, to
facilitate market trades.
A listing of the securities in an investment portfolio, and helpful
financial information about each security, can be displayed to a trader “in a
spreadsheet format in which a list of securities and associated information
are arranged in rows and columns.” (Spec. ¶ 36.) For example, each
security in the portfolio could have its own row in the spreadsheet and
columns could contain helpful financial information about each listed
security. (See id. ¶ 38, Fig. 3.)
“[T]raders can anticipate price trends from comparison of present
trading volume against historical trading volume during similar time
intervals.” (Bay4 6:22–24.) When columns on a spreadsheet contain helpful
financial information about each security in an investment portfolio, this
helpful financial information could visually convey the result of each
security’s trading-volume comparison. For example, “volume indicators,”
indicating the result of this comparison (id. at 6:21–22) could be displayed to

3 US 2006/0212376 A1, published September 21, 2006.
4 US 5,347,452, issued September 13, 1994.
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a trader so that he/she can “identify[] abnormal variations” in a security’s
trading volume (id. at 1:31–33).
The display of two juxtaposed graphs (correlating a security’s current
trading volume with the security’s historical trading volume) allows a trader
to “quickly ascertain if volume is above or below average.” (Bay 2:28–30;
see also Fig. 1.) However, according to the Appellant, the problem with this
approach is that, in order for a trader “to know whether an abnormal trading
condition exists,” the trader “would have to calculate an estimate based on
the historic trade volume, calculate the difference of the estimate and the
real-time trade volume, and then compare to a threshold for abnormality.”
(Arguments/Remarks filed June 20, 2012, page 10.)
The Appellant’s method solves this problem by having a computer do
the estimation, calculation, and comparison that, according to the Appellant,
must be done if a trader wants to know whether an abnormal trading
condition exits. (See Spec. ¶¶ 23, 31.) If the trading-volume comparison
reveals “abnormal conditions” for a security (i.e., it exceeds a preselected
threshold for abnormality), the computer generates an indicator of
abnormality. (See id. ¶ 34.) “Any icon” can be “employed as an indicator of
abnormal conditions.” (Id. ¶ 36.) The indicator of abnormality (e.g., an
icon) is then received by, and displayed on, the trader’s workstation to
facilitate market trades. (See id. ¶ 35.)
Thus, in a nutshell, the Appellant’s method computes helpful financial
information, and then provides this helpful financial information to a trader,
via a displayed icon, so that he/she can “react quickly to abnormal trading
conditions” (Appeal Br. 18), or in other words, make favorable financial
decisions.
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ILLUSTRATIVE CLAIM
(with bracketed text added)
15. A method of displaying on a graphical user interface
of an electronic trading platform workstation, said electronic
trading workstation including a computer and a monitor and
being coupled with a plurality of electronic trading venues via
an electronic data network and configured to, the method
comprising:
[(a)] dynamically displaying, on the graphical user
interface of the workstation, market data for a plurality of
securities, including an indication of a security and an
indication of a current value for a first variable of the security;
[(b)] determining, by a first computer server, that the
current value for the first variable is abnormally different from
a value estimated for the first variable based on historical
market data when a difference, determined by the first computer
server, between the current value and the estimated value
exceeds a preselected threshold for abnormality;
[(c)] receiving, at said workstation from said first
computer server, an electronic communication indicating that is
abnormally different from the value estimated for the first
variable;
[(d)] displaying, in real-time, on the graphical user
interface of the workstation, a graphical indicator, generated by
the first computer, reflecting that the value for the first variable
of the security is abnormal and a magnitude of the abnormality.
REJECTION
Claims 15–34, 36, and 37 stand finally rejected under 35 U.S.C. § 101
as being directed to a judicial exception (i.e., an abstract idea) without
significantly more. (Final Action 11.)
JUDICIAL EXCEPTIONS
The Patent Act defines subject matter eligible for patent protection as
“any new and useful process, machine, manufacture, or composition of
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matter, or any new and useful improvement thereof.” (35 U.S.C. § 101.)
Yet the Supreme Court has “long held” that this provision contains an
important implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” (Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 589 (2013).) These three concerns are
“judicially created exceptions to § 101,” or more concisely, “judicial
exceptions.” (McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1311 (Fed. Cir. 2016).) Thus, an abstract idea is a judicial exception to
subject matter (e.g., a method) that otherwise falls within a category listed in
the statute.
THE ALICE TEST
In Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014), the Supreme
Court provided a two-step test to detect when an attempt is being made to
patent an abstract idea in isolation. (Id. at 217–18.) In Alice step one, a
determination is made as to whether the claim at issue is “directed to” an
abstract idea. (Id. at 218.) When doing Alice step one, attention can be
given to whether an abstract idea recited in the claim has been integrated
into a practical application. (See id. at 217.) While a judicial exception
(e.g., an abstract idea) cannot be patented, “an application” of a judicial
exception “to a known structure or process may well be deserving of patent
protection.” (Diamond v. Diehr, 450 U.S. 175, 187 (1981); see also Bilski v.
Kappos, 561 U.S. 593 (2010).)
If the claim at issue is “directed to” an abstract idea, Alice step two
must be performed. (See Alice, 573 U.S. at 217–18.) In the second step of
the Alice test, a determination is made as to whether “additional elements” in
the claim, both individually and as an ordered combination, contribute
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“significantly more” than the abstract idea. (Id.) When doing Alice step
two, attention is given to whether additional elements, and any ordered
combination thereof, are “well-understood,” “routine,” or “conventional.”
(Id. at 225.)
2019 § 101 GUIDANCE
The 2019 Revised Patent Subject Matter Eligibility Guidance (“2019
§ 101 Guidance”) provides us with specific steps for discerning whether a
claim passes the Alice test for patent eligibility. (See Federal Register
Vol. 84, No. 4, 50–57.) These steps are “[i]n accordance with judicial
precedent,” and consist of a two-pronged Step 2A and a Step 2B. (Id. at 52.)
ANALYSIS
The Examiner determines that independent claim 15 is “directed to”
an abstract idea involving the display of financial information (Answer 4);
and the Examiner determines that additional elements in independent
claim 15 do not amount to “significantly more” than this abstract idea (id.
at 12). More succinctly, the Examiner concludes that claim 15 fails the Alice
test for patent eligibility.
Prong One of Step 2A
We begin our analysis with the first prong of Step 2A (Prong One) of
the Guidance, by determining whether the claim at issue “recites” an abstract
idea. (2019 § 101 Guidance, 84 Fed. Reg. 50, 54.) The Guidance “extracts
and synthesizes key concepts identified by the courts as abstract ideas,” and
these concepts include “[c]ertain methods of organizing human activity,”
and, more particularly, “fundamental economic principles or practices.” (Id.
at 52.) Providing a person with helpful financial information so that he/she
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can make favorable financial transactions is a fundamental economic
practice. And displaying financial information on a trader’s “trading screen”
(i.e., the graphical user interface of an electronic trading platform
workstation coupled with a plurality of electronic trading venues via an
electronic data network) equates to “providing a trader with additional
financial information to facilitate market trades.” (Trading Technologies
International, Inc. v. IBG LLC, 921 F.3d 1378, 1384.)
Independent claim 15 sets forth a method comprising steps (a)–(d).
(See Appeal Br., Claims App.) This method is “[a] method of displaying
information on the graphic user interface of an electronic trading platform
workstation.” (Id.) Thus, the claim language itself enunciates that the
claimed method provides a trader with information by displaying this
information on the trader’s trading screen.
More specifically, step (a) recites displaying, on a trader’s trading
screen, “market data for a plurality of securities, including an indication of a
security and an indication of a current value for a first variable of the
security.” (Appeal Br., Claims App.) Thus, step (a) sets forth that the
securities in an investment portfolio can be listed in rows on a spreadsheet,
and columns in this spreadsheet can convey current information about each
security, such as its current trading volume. And this spreadsheet can be
displayed on the trader’s trading screen to facilitate market trades.
Step (b) recites determining “that the current value for the first
variable is abnormally different from a value estimated for the first variable
based on historical market data” when a difference “between the current
value and the estimated value exceeds a preselected threshold for
abnormality.” (Appeal Br., Claims App.) Thus, step (b) sets forth that an
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estimation, calculation, and comparison can be done to compute financial
information to facilitate market shares, and this financial information can
pertain to abnormality in a security’s trading volume.
Step (c) recites receiving, on the trader’s workstation, “an electronic
communication indicating that is abnormally different from the value
estimated for the first variable.” (Appeal Br., Claims App.) Thus, step (c)
sets forth that the trader can receive financial information to facilitate market
trades, and that this financial information can convey an abnormality in a
security’s trading volume.
Step (d) recites displaying, on the trading screen, “a graphical
indicator” that “reflect[s] that the value for the first variable of the security is
abnormal and a magnitude of the abnormality.” (Appeal Br., Claims App.)
Thus, step (d) sets forth that a graphical indicator (e.g., an icon) can occupy
a column of the displayed spreadsheet. And this icon can convey helpful
financial information to the trader about an abnormality in a security’s
trading volume.
Thus, steps (a)–(d) recite steps performed to display helpful financial
information on a trader’s trading screen, which equates to providing the
trader with additional financial information to facilitate market trades. And
providing a trader with helpful financial information so that he/she can make
favorable financial transactions is a fundamental economic practice, which is
a method of organizing human activity that constitutes an abstract idea.
(2019 § 101 Guidance, 84 Fed. Reg. at 52.)
Consequently, under Prong One of Step 2A, independent claim 15
recites an abstract idea; and so we proceed to the second prong of Step 2A.
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Prong Two of Step 2A
In the second prong of Step 2A (Prong Two) we evaluate whether the
claim contains additional elements that “integrate” the abstract idea “into a
practical application.” (2019 Guidance, 84 Fed. Reg. at 54.) “Additional
elements” are “claim features, limitations, and/or steps that are recited in the
claim beyond the identified judicial exception.” (Id. at 55, n. 24.) As such,
an “additional element” in independent claim 15 is a limitation that is
beyond the abstract idea of providing a trader with helpful financial
information to facilitate market trades.
When an additional element in a claim is a “computer,” the relevant
question is not whether the claim requires the computer to accomplish a
recited function. (Alice, 573 U.S. at 223.) Rather, “the relevant question” is
whether the claim does more than simply “instruct the practitioner to
implement the abstract idea” on a computer. (Id. at 225.) The mere
recitation of a computer in the claim, and/or words simply saying “apply”
the abstract idea “with a computer,” will not “transform the abstract idea into
a patent-eligible invention.” (Id. at 223.) In short, the sheer introduction of
a computer into the claim is not enough to “impart patent eligibility.” (Id.)
Independent claim 15 requires the displays in steps (a) and (d) to be
on “a graphical user interface of an electronic trading platform workstation,”
and requires the communication in step (c) to be received at “said
workstation.” (Appeal Br., Claims App.) This amounts to using a first
computer as a display substrate and a destination for information. Thus,
claim 15 instructs a practitioner to use a first computer to implement
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displaying and receiving steps innate in the abstract idea of providing a
trader with financial information to facilitate market trades.5
Independent claim 15 requires a “computer server” to do the
determination recited in step (b), to send the communication recited in
step (c), and to generate the graphical indicator recited in step (d). This
amounts to a computer processing information and sending information to
another computer. Thus, claim 15 instructs a practitioner to use a second
computer to implement the processing of financial information, and the
sending of financial information, to a trader to facilitate market trades.
Independent claim 15 requires the display recited in a step (a) to be
“dynamic[],” and the display recited in step (d) to be in “real time.” (Appeal
Br., Claims App.) This is just another way of saying that, in order for the
financial information displayed to the trader to be most helpful, it must be as
current as possible, and thus, constantly updated. Thus, claim 15 instructs a
practitioner to use a computer as a tool to provide “information to traders in
a way that helps them process information more quickly,” for the purpose of
“improving the trader.” (Trading Technologies (IBG), 921 F.3d at 1383.)
Consequently, in claim 15, neither the first computer (i.e., the trader’s
workstation) nor the second computer (i.e., the server), individually,
integrates the abstract idea into a practical application. However, the 2019
§ 101 Guidance requires us to also look at claim 15 as a whole in our

5 Independent claim 15 recites, in its preamble, that the trader’s workstation
is “coupled with a plurality of electronic trading venues via an electronic
data network.” (Appeal Br., Claims App.) This would seem to be true of
any computing device having a “trading screen” which a trader uses to
facilitate market trades. (See Trading Technologies (IBG), 921 F.3d
at 1381.)
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evaluation of whether this abstract idea has been integrated into a practical
application. (See 2019 § 101 Guidance, 84 Fed. Reg. at 54.) Even when
additional elements are not enough on their own to meaningfully limit an
exception, the claimed combination of these additional elements may still
provide the practical application. (See id.)6
Here, however, the claimed combination consists of the first computer
(the trader’s workstation) “receiving” and “displaying” financial information
“from” the second computer, namely a graphic indicator. (Appeal Br.,
Claims App.) This nonspecific coordination between the first and second
computer is not enough to integrate the recited abstract idea (i.e., providing a
trader with helpful financial information to facilitate market trades) into a
practical application. Put another way, claim 15 instructs a practitioner to
use computers “to do what computers do.” (Answer 14.)7
Consequently, under Prong Two of Step 2A, additional elements in
independent claim 15 do not integrate the recited abstract idea into a
practical application. Thus, claim 15 is “directed to” the abstract idea of
providing a trader with financial information to facilitate market trades, and
so we proceed to Step 2B of the Guidance.

6 In Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016), the Federal Circuit expressly held that it is sometimes
possible for “an inventive concept” to reside in “the non-conventional and
non-generic arrangement of known, conventional pieces,” such as “a set of
generic computer components.” (Bascom, 827 F. 3d at 1350.)
7 “Given the ubiquity of computers, wholly generic computer
implementation is not generally the sort of ‘additional featur[e]’ that
provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’” (Alice, 573 U.S.
at 223–24 (citations omitted).) “Nearly every computer” will include
hardware capable of preforming “transmission functions.” (Id. at 226.)
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Step 2B
In Step 2B, we evaluate whether “additional elements recited in the
claim[] provide[] ‘significantly more’ than the recited judicial exception.”
(2019 Guidance, 84 Fed. Reg. at 56.) More particularly, we evaluate
whether these additional elements “add[] a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity.” (Id.) If a claim is directed to an abstract idea, a
conventional arrangement of conventional computer components performing
conventional computer functions will not amount to “significantly more”
than this abstract idea, and the claim will fail the Alice test for patent
eligibility. (See Alice, 573 U.S. at 225.)
As discussed above, the additional elements in independent claim 15
are a first computer (the trader’s workstation) and a second computer that
processes and sends information for display on the first computer. The
Specification describes these additional elements as conventional computer
components that are arranged in a conventional manner to perform
conventional computer functions. (See Spec. ¶¶ 20–22, Fig. 1.)
Consequently, additional elements in independent claim 15 do not add
“significantly more” to the abstract idea of providing a trader with helpful
financial information to facilitate market trades; and claim 15 fails the Alice
test for patent eligibility.
The Appellant’s Arguments
The Appellant argues that claim 15 is “just like” the claims under
review in Trading Technologies Int.’l, Inc. v. CQG, Inc., 675 Fed.
Appx. 1001 (Fed. Cir. 2017). (Appeal Br. 22.) We note that, in this non-
precedential case, the Federal Circuit’s holding did not hinge upon the
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discovery that the claimed financial information could be helpful to a trader
to facilitate market trades; but rather on software improvements that
“prevent[ed] order entry at a changed price.” (Trading Technologies (CQG),
675 Fed. Appx. at 1003.) Tellingly, claim 15 does not require any
interaction between the trader and the financial information displayed on
his/her trading screen.8
Moreover, the Federal Circuit later clarified, in a precedential case,
that “providing a trader with new or different information in an existing
trading screen is not a technical solution to a technical problem.” (Trading
Technologies (IBG), 921 F.3d at 1383.) In this precedential case, the
Federal Circuit explained that the claimed method, which “display[ed] an
indicator representing market information” on a graphical user interface, did
“not improve the functioning of the computer, make it operate more
efficiently, or solve any technological problem.” (Id. at 1385.) The Federal
Circuit said that, insofar as the display of the claimed indicator (representing
financial information) was an “improvement,” it “improve[ed] the trader, not
the functioning of [a] computer.” (Id. at 1383.)
The Appellant argues that independent claim 15 claims a method that
must be practiced “in the realm of a computerized electronic trading.”
(Appeal Br. 22.) This might be true, as the method involves the display of

8 Dependent claim 22 (not separately argued) recites “automatically
executing a trade based on determining that the difference between the
current value for the first variable and the estimated value exceeds a
preselected threshold for abnormality.” (Appeal Br., Claims App.)
However, this claim does not require, and the Specification does not
describe, any pairing between this automatic execution and the financial
information displayed on the trader’s trading screen.
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helpful financial information on an “electronic trading workstation” which is
“coupled with a plurality of electronic trading venues via an electronic data
network.” (Id., Claims App.) However, the flaw in this argument is that a
fundamental economic practice does not become non-abstract by limiting its
practice to an electronic environment.9 And the electronic-trading world is
no stranger to abstract ideas. (See Trading Technologies (IBG), 921 F.3d
at 1384.)
The Appellant argues that computerized electronic trading requires a
“specific configuration of computers” that is “technologically advanced.”
(Appeal Br. 22.) There seems to be no dispute that an electronic trading
platform is undergirded by a sophisticated configuration of computers. But
the Appellant is not trying to cure a technical shortcoming of this
undergirding. Rather, the Appellant acknowledges that the “solution”
provided by the claimed method is displaying a graphical indicator on a
trader’s trading screen “which allows the trader to react quickly to abnormal
trading conditions.” (Appeal Br. 18.) And the Appellant does not contend
that it was necessary to invent new computer technology to make the display
of this graphical indicator possible.10

9 For example, limiting price optimization to an “e-commerce setting” does
not make this fundamental economic practice “any less abstract” (OIP
Technologies, Inc. v Amazon.com, Inc. 788 F.3d 1359, 1362–63
(Fed. Cir. 2015); and limiting guarantees to “online transactions” is
“insufficient” to save a claim from abstractness (buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1365 (Fed. Cir. 2104)).
10 The Appellant implies that independent claim 15 requires a “central
server” that is connected to “historical data services a plurality of client
workstations executing a graphic user interface.” (Appeal Br. 22.) This is
not entirely accurate. Claim 15 requires a “computer server” to determine
the difference between a current value and an “estimated” value “based on
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The Appellant argues that independent claim 15 requires a real-time
display of the graphic indicator, and that this real-time feedback is
something that a human could not do without a computer. (See Appeal
Br. 15.) Indeed, it is usually difficult, if not impossible, for a human to
provide informational feedback at the same speed as a computer. But using
a computer to perform a task “more quickly or more accurately” is not a
ticket into patent-eligible territory. (OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1363 (Fed. Cir. 2015).)
The Appellant argues that “to the extent the claims are implemented
through the use of computers, there is no evidence that the claimed functions
are the same as that previously used by manual human traders.” (Appeal
Br. 18.) We are aware of no controlling case law requiring such evidence in
the context of a fundamental economic practice. Before the Appellant’s
invention, traders may not have been looking at the particular financial
information recited in claim 15, and they may not have been doing the
calculations leading thereto. But this just means that the Appellant
appreciated (perhaps before anyone else) that this particular financial
information would be helpful information to a trader. If so, the Appellant
improves a fundamental economic practice (i.e., providing a person with
helpful financial information so that he/she can make favorable financial
transactions) by providing some financial information that was not
previously provided.

historical market data.” (Id., Claims App.) Claim 15 does not require the
computer server to have access to (or even know about) historical market
data. And, although claim 15 requires the workstation to “receiv[e]” a
communication from the computer server, it does not specify a specific
communication configuration therebetween.
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The Appellant argues that, per the Federal Circuit’s holding in McRO,
a claim is not “directed to” an abstract idea if it has “rules” embodied in
computer software, even when those rules are processed by a general
purpose computer. (See Appeal Br. 15–17.) However, there are no “rules”
whatsoever recited in independent claim 15. Moreover, even the recitation
of sophisticated rules for fulfilling a fundamental economic practice (as
opposed to a non-abstract endeavor such as automated animation) might not
disqualify a claim from being directed to an abstract idea.
The Appellant argues that “there are no prior art rejections at all, and
thus there is no evidence that the claims are not new and nonobvious.”
(Appeal Br. 18.) The Appellant seems to be saying that if a claim recites an
abstract idea that has not yet been disclosed in the prior art, this undisclosed
abstract idea is patent eligible. But a “new” abstract idea (even a “brilliant”
abstract idea) “does not by itself satisfy the § 101 inquiry.” (Myriad,
569 U.S. at 591.) As mentioned above, the Appellant may very well have
been the first to realize that the display of the claimed financial information
improved a fundamental economic practice, but this improved fundamental
economic practice is nonetheless an abstract idea.
Thus we agree with the Examiner that independent claim 15 recites a
judicial exception without significantly more.
The Appellant’s Declaration
A Declaration by Milan Borkovec, dated December 17, 2015
(“Declaration”), was filed to produce “additional evidence of patentability in
the record.” (See Appeal Br. 9.) The Appellant contends, correctly, that an
examiner’s outright refusal to consider such a declaration could constitute
reversible error. (See id. at 13.) Here, however, the record plainly shows
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that the Examiner fully considered the factual assertions made in the
Declaration when doing the Alice test for patent eligibility. (See Final
Action 4–6; Answer 6–9.)
The Appellant’s foremost frustration appears to be the Examiner’s
unwillingness to do a wholesale adoption of the Declarant’s opinion that the
claimed method does not satisfy Alice step one. (See Appeal Br. 14–15.) In
the Declarant’s opinion, the claimed method is “in no way abstract”
(Declaration ¶ 8E), “directed to a technical solution” (id. ¶ 7; see also ¶¶ 8E,
8F, 9, 10), and “rooted in computer technology” (id. ¶ 10).
The final determination of whether a claim satisfies Alice step one is a
legal determination we make in light of the Specification, the actual claim
language, controlling case law, and, sometimes, underlying facts. Here, as
in most appeals, the Appellant’s opinion differs from that of the Examiner as
to what conclusion we should reach on a matter of law. But an appellant
restating its opinion on a matter of law in a declaration does not convert this
opinion into evidence.
The Declaration does include factual assertions describing how
electronic trading “changed the entire paradigm for trading” (Declaration
¶ 8D; see also ¶¶ 8A–8C, 8G), the inability of a human to put “indicators on
a display for traders to be used in any meaningful way” (id. ¶ 8I), and how
the “implementation of a trading strategy is no trivial task and the
technology for doing so is very complicated and advanced” (id. ¶ 8D).
These factual assertions should be taken into consideration when doing the
Alice test for patent eligibility, and the record reflects that the Examiner has
done so. (See Final Action 4–6; Answer 6–9.)
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The trouble is that these factual assertions in the Declaration (which
we can assume for the purposes of this appeal are entirely true) do not tilt the
Alice scale towards patent eligibility. These factual assertions establish, at
best, that the recited fundamental economic practice is practiced in a
particular electronic environment, and that a computer can perform a task
implementing this fundamental economic practice more efficiently than a
human. As discussed above, these facts do not lift a fundamental economic
beyond an abstract idea. Although the claimed invention may “sit[] inside”
a complicated market structure (Declaration ¶ 8E), the Appellant is not
trying to cure a technical shortcoming of the complicated technology that
ungirds the electronic-trading market.
Thus, we agree with the Examiner that the factual assertions made in
the Declaration do not sway the outcome of the Alice test one way or the
other.
Summary
After careful consideration of the Appellant’s arguments and
Declaration, we are not convinced that the Examiner wrongly concludes that
independent claim 15 does not pass muster under 35 U.S.C. § 101. The
claims on appeal are argued as group (see Appeal Br. 11–14), and so
claims 16–34, 36, and 37 fall with independent claim 15.11

11 “When multiple claims subject to the same ground of rejection are argued
as a group or subgroup by appellant, the Board may select a single claim
from the group or subgroup and may decide the appeal as to the ground of
rejection with respect to the group or subgroup on the basis of the selected
claim alone.” (37 C.F.R. § 41.37(c)(1)(iv).)
Appeal 2018-006345
Application 13/185,929

19
CONCLUSION
Claims
Rejected
Basis  Affirmed Reversed
15–34, 36, 37 § 101 – subject
matter eligibility  
15–34, 36, 37

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).

AFFIRMED