Douglas Miles et al.

Patent Trials and Appeals Board

Nov 29, 2019

15282450 - (D) (P.T.A.B. Nov. 29, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/282,450 09/30/2016 Douglas Miles GG0163.019 4550
39689 7590 11/29/2019
Chipperson Law Group, P.C.
25 Green Village Road, Suite 2A
Madison, NJ 07940
EXAMINER
MAGUIRE, LINDSAY M
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
11/29/2019 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):
RCC@CHIPPERSONLAW.COM
pmp@chippersonlaw.com
ritachip@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________ 

Ex parte DOUGLAS MILES and JACOB GINDER
________________

Appeal 2018-009230
Application 15/282,450
Technology Center 3600
________________

Before JASON J. CHUNG, JAMES W. DEJMEK, and
MATTHEW J. McNEILL, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 6–25.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention relates to risk/valuation analytics system combined with
a financial asset trading information processing and transmission system for
conducting electronic transactions, and optionally tracking asset portfolios,

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). According to Appellant, Globalprivatequity.com,
Inc. is the real party in interest. Br. 2.
2 Claims 1–5 are cancelled. Br. 17.
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executable on a global information network. Spec. ¶ 1. Claim 6 is
representative of the invention and is reproduced below:
6. A system for monitoring and/or transacting, via an
electronic network, exempt securities or assets not otherwise
listed, traded, valuated or bought/sold in any conventional
exchange or system for the regulation of securities or
commodities comprising:
at least one local client computer for allowing a user to
monitor and/or transact exempt securities or assets not otherwise
listed, traded, valuated or bought/sold in any conventional
exchange or system for the regulation of securities or
commodities; and
a remote server coupled to the client computer and the
electronic network, said remote server operating at least the
following software modules;
operating at least the following:
an asset analytic software module for statistically
analyzing at least one of the exempt securities or assets not
otherwise listed, traded, valuated or bought/sold in any
conventional exchange or system for the regulation of securities
or commodities selected by a user;
an asset track software module for collecting at least one
of price data, valuation data, and marketing data related to the at
least one of the exempt securities or assets not otherwise listed,
traded, valuated or bought/sold in any conventional exchange or
system for the regulation of securities or commodities being
analyzed;
an asset information communication software module for
providing the user at least one of inventory data of assets
available to a user, the price data, the valuation data, the
marketing data, and a result of the statistical analysis on the at
least one of the exempt securities or assets not otherwise listed,
traded, valuated or bought/sold in any conventional exchange or
system for the regulation of securities or commodities via at least
one graphical user interface; and
an asset access software module for providing
transactional access via the at least one graphical user interface
to conduct at least one of bidding to buy, offering to sell and
auctioning transactions in connection with the at least one of the
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exempt securities or assets not otherwise listed, traded, valuated
or bought/sold in any conventional exchange or system for the
regulation of securities or commodities being analyzed.

REJECTION AT ISSUE
Claims 6–25 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2–6.

ANALYSIS
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with 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);
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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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); 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 that “[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 192 (“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. (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.”).
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 (quotation marks omitted). “A
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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. (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.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). Under that
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 of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
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 specific limitations beyond the judicial exception that are 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.
See Memorandum.
B. The Examiner’s Conclusions and Appellant’s Arguments
The Examiner concludes the claims are “directed towards a system for
monitoring and/or transacting exempt securities or assets through the use of
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comparing new and stored information and using rules to identify options.”
Final Act. 3. More particularly, the Examiner concludes that monitoring
and/or transacting exempt securities or assets is a fundamental economic
practice and that comparing new and stored information and using rules to
identify options is an idea in and of itself. Id. Further, the Examiner finds
the claims to not recite significantly more than the abstract idea(s). Id. In
addition, the Examiner determines the claims recite the abstract idea is
implemented on generic components that are well-understood, routine, and
conventional previously known to the industry. Id. at 3, 6 (citing Spec.
¶¶ 8–10, 87, 88); Ans. 7 (citing Spec. ¶¶ 8–10, 87, 88).
Appellant argues the Examiner fails to provide a prima facie case of
ineligibility because the Examiner does not provide sufficient reasoning.
Br. 9–10. Appellant argues the Examiner fails to provide any support for the
conclusion that the limitation “exempt securities or assets not otherwise
listed, traded, valuated or bought/sold in any conventional exchange or
system for the regulation of securities or commodities” is abstract. Id. at 12–
13. Appellant argues the present claims are directed to an improvement to
monitoring and/or transacting exempt securities or assets not otherwise
listed, traded, valuated or bought/sold in any conventional exchange or
system for the regulation of securities or commodities. Id. at 14. Appellant
argues the present claims recite a combination of non-conventional and non-
generic arrangement of known, conventional elements, which results in an
inventive concept. Id. Appellant argues the Examiner fails to provide any
evidence to support the finding that the present claims do not amount to
significantly more than an abstract idea itself because the Examiner finds the
abstract idea is implemented on generic components that are well-
understood, routine, and conventional previously known to the industry. Id.
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at 15–16 (citing USPTO Commissioner for Patents Memorandum dated
Apr. 9, 2018, “Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision” (Berkheimer
v. HP, Inc.)).3, 4 We disagree with Appellant.
C. Discussion
1. Step 2A, Prong 1
We reproduce claim 6 below, with emphases.
6. A system for monitoring and/or transacting, via an
electronic network, exempt securities or assets not otherwise
listed, traded, valuated or bought/sold in any conventional
exchange or system for the regulation of securities or
commodities comprising:
at least one local client computer for allowing a user to
monitor and/or transact exempt securities or assets not
otherwise listed, traded, valuated or bought/sold in any
conventional exchange or system for the regulation of securities
or commodities; and
a remote server coupled to the client computer and the
electronic network, said remote server operating at least the
following software modules;
operating at least the following:
an asset analytic software module for statistically
analyzing at least one of the exempt securities or assets not
otherwise listed, traded, valuated or bought/sold in any

3 We note that Appellant argues the limitation “an asset access software
module . . .” is not related to “collecting information, analyzing it, and
displaying certain results of the collection and analysis.” Br. 10. However,
we need not decide this issue to reach our Decision because we conclude
that this limitation recites fundamental economic practices and commercial
interactions, which fall into the category of certain methods of organizing
human activity (i.e., an abstract idea) as discussed infra.
4 We note that Appellant argues “memory” and “processor” are no longer in
the present claims. Br. 12–13. We need not decide this issue to reach our
Decision.
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conventional exchange or system for the regulation of securities
or commodities selected by a user;
an asset track software module for collecting at least one
of price data, valuation data, and marketing data related to the
at least one of the exempt securities or assets not otherwise listed,
traded, valuated or bought/sold in any conventional exchange or
system for the regulation of securities or commodities being
analyzed;
an asset information communication software module for
providing the user at least one of inventory data of assets
available to a user, the price data, the valuation data, the
marketing data, and a result of the statistical analysis on the at
least one of the exempt securities or assets not otherwise listed,
traded, valuated or bought/sold in any conventional exchange or
system for the regulation of securities or commodities via at least
one graphical user interface; and
an asset access software module for providing
transactional access via the at least one graphical user interface
to conduct at least one of bidding to buy, offering to sell and
auctioning transactions in connection with the at least one of the
exempt securities or assets not otherwise listed, traded, valuated
or bought/sold in any conventional exchange or system for the
regulation of securities or commodities being analyzed.

The emphasized portions of claim 6,5 reproduced above, recite
fundamental economic practices and commercial interactions. According to
the Memorandum, fundamental economic practices and commercial
interactions fall into the category of certain methods of organizing human
activity. See Memorandum. Those certain methods of organizing human
activity are a type of an abstract idea. See id.; see also Alice, 573 U.S. at
219–220 (concepts determined to be abstract ideas, and thus patent

5 Appellant does not argue claims 7–25 separately. Br. 9–16. We, therefore,
group claims 6–25 together and refer to those claims as the “present claims.”
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ineligible, include certain methods of organizing human activity, such as
fundamental economic practices).
Moreover, we conclude the limitation “statistically analyzing . . . for
the regulation of securities or commodities selected by a user” recites
concepts performed in the human mind. According to the Memorandum,
concepts performed in the human mind fall into the category of mental
processes. See Memorandum. Those mental processes are a type of an
abstract idea. See id.; see also Electric Power Group, LLC v. Alstom S.A.,
830 F.3d 1355–1356 (Fed. Cir. 2016) (a mental process is an abstract idea).
We disagree with Appellant’s argument that the Examiner fails to
provide a prima facie rejection because the Examiner does not provide
sufficient reasoning. Br. 9–10. Patent eligibility under 35 U.S.C. § 101 is a
question of law that is reviewable de novo. See Dealertrack, Inc. v. Huber,
674 F.3d 1315, 1333 (Fed. Cir. 2012). We are aware of no controlling
authority that requires the Examiner to provide factual evidence under step
one of the Alice framework to support a determination that a claim is
directed to an abstract idea. The Federal Circuit has repeatedly noted that
“the prima facie case is merely a procedural device that enables an
appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d
1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992)). The Examiner satisfies the burden of establishing a prima facie
case under 35 U.S.C. § 132 by setting forth a rejection in a sufficiently
articulate and informative manner. In re Jung, 637 F.3d 1356, 1363 (Fed.
Cir. 2011). If the Examiner “adequately explain[s] the shortcomings . . . the
burden shifts to the applicant to rebut the prima facie case with evidence
and/or argument.” Hyatt, 492 F.3d at 1370. The Final Office Action
adequately explains the § 101 rejection. See Final Act. 2–6. The
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Examiner’s statements satisfy § 132(a) because they apply the Alice
analytical framework and apprise Appellant of the reasons for the § 101
rejection under that framework. Appellant has not responded by alleging a
failure to understand the rejection.
We disagree with Appellant’s argument that the Examiner fails to
provide any support for the conclusion that the limitation “exempt securities
or assets not otherwise listed, traded, valuated or bought/sold in any
conventional exchange or system for the regulation of securities or
commodities” is abstract. Br. 12–13. Contrary to Appellant’s arguments,
the Examiner has set forth sufficient reasoning and support for the
conclusion that the claims are not patent eligible under 35 U.S.C. § 101. In
particular, the Examiner identifies what the claims are directed to (“a system
for monitoring and/or transacting exempt securities or assets through the use
of comparing new and stored information and using rules to identify
options”) and, analogizing the character of the claims to other cases such as
Alice and Bilski, concludes that the claims are directed to a fundamental
economic practice, which is an abstract idea. See Final Act. 2–5; see also
Memorandum (characterizing a fundamental economic practice as an
abstract idea). In addition, the Examiner identifies disclosures from
Appellant’s Specification that merely describe the computer and computer
functions in generic high-level terms. Final Act. 5–6.
Because the present claims recite an abstract idea, we proceed to
prong 2.
2. Step 2A, Prong 2
The present claims do not integrate the abstract idea into a practical
application because they do not impose any meaningful limits on practicing
the abstract idea. In particular, we disagree with Appellant’s argument that
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the present claims recite improvements to monitoring and/or transacting
exempt securities or assets not otherwise listed, traded, valuated or
bought/sold in any conventional exchange or system for the regulation of
securities or commodities. Br. 14.
Instead, the present claims recite an abstract idea as discussed supra,
in § I.C.1. or at best, improving an abstract idea—not a technological
improvement. The Specification indicates the additional elements (i.e.,
“local client computer,” “remote server,” “electronic network,” “analytic
software module,” “asset track software module,” “asset information
communication software module,” and “asset access software module”)
recited in the present claims are merely tools used to implement the abstract
idea. Spec. ¶¶ 8–10, 87, 88.
Additionally, “a claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (emphasis added). “[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility . . . .” Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted).
Furthermore, the present claims amount to merely automating the
abstract idea discussed supra in § I.C.1. “Automation” or any increase in
processing speed in the claimed method (as compared to without using
computers) comes from the capabilities of the generic computer
components, and not the recited process itself. See FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp
Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012)
(“[T]he fact that the required calculations could be performed more
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efficiently via a computer does not materially alter the patent eligibility of
the claimed subject matter.”)); see also Intellectual Ventures I LLC v. Erie
Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir. 2017) (unpublished)
(“Though the claims purport to accelerate the process of finding errant files
and to reduce error, we have held that speed and accuracy increases
stemming from the ordinary capabilities of a general-purpose computer ‘do[]
not materially alter the patent eligibility of the claimed subject matter.’”).
Appellant does not make any other arguments pertaining to step 2A,
prong 2. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.
3. Step 2B
We disagree with Appellant’s Berkheimer argument that the Examiner
fails to provide any evidence to support their finding. Br. 15–16. In
particular, we agree with the Examiner’s finding that the abstract idea is
implemented on generic components that are well-understood, routine, and
conventional. Final Act. 3, 6 (citing Spec. ¶¶ 8–10, 87, 88); Ans. 7 (citing
Spec. ¶¶ 8–10, 87, 88). The Specification supports the Examiners finding in
this regard because it explains that “local client computer,” “remote server,”
“electronic network,” “analytic software module,” “asset track software
module,” “asset information communication software module,” and “asset
access software module” are generic components. Spec. ¶¶ 8–10, 87, 88.
Indeed, Appellant’s Specification indicates these elements were well-
understood, routine, and conventional components because it describes them
at a high level of generality and in a manner that indicates that they are
sufficiently well-known. Id.
We disagree with Appellant’s argument that the present claims recite
a combination of non-conventional and non-generic arrangement of known,
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conventional elements, which results in an inventive concept. Br. 14.
Instead, the present claims are directed to an abstract idea using generic
components as discussed supra, in §§ I.C.1. and I.C.2. or at best, improving
an abstract idea—not an inventive concept.
Appellant does not argue claims 7–25 separately, but assert the § 101
rejection of those claims should be withdrawn for at least the same reasons
as argued for independent claim 6. Br. 9–16. Based on our review of the
dependent claims, these claims do not recite any additional features that
would transform the abstract idea embodied in claim 6 into an inventive
concept. Accordingly, we sustain the Examiner’s rejection of:
(1) independent claim 6; and (2) dependent claims 7–25 under 35 U.S.C.
§ 101.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
6–25 101 Eligibility 6–25

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. § 1.136(a)(1)(iv).
AFFIRMED