Ex Parte Lejdstrom et al

Patent Trial and Appeal Board

Feb 25, 2019

11724313 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/724,313 03/15/2007
23117 7590 02/27/2019
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Bengt Lejdstrom
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
JRL-4010-60 1871
EXAMINER
EBERSMAN, BRUCE I
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
02/27/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BENGT LEJDSTROM, OSKAR SANDER, and
JOHAN SODERQVIST
Appeal2017-004876
Application 11/724,313
Technology Center 3600
Before PHILLIP J. KAUFFMAN, AMBER L. HAGY, and
MICHAEL M. BARRY, Administrative Patent Judges.
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3, 5, 7-11, and 17-27, which are all of the
pending claims. 2 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the real party in interest as Nasdaq Technology AB.
(App. Br. 3.)
2 By way of an amendment dated December 15, 2015, Appellants canceled
claims 2, 4, 6, and 12. By way of an amendment dated February 27, 2014,
Appellants canceled claims 13-16.
Appeal2017-004876
Application 11/724,313
STATEMENT OF THE CASE
Introduction
Appellants' described and claimed invention relates generally to a
"securities settlement system." (Spec. 1.) By way of background,
Appellants' Specification notes that "[ t ]ransactions between market
participants require matching and settlement," and further notes that "[t]rade
matching and confirmation prepare transactions for settlement according to
applicable settlement rules." (Id.) The Specification states that "[ a ]n overall
object and purpose of the securities settlement system (SSS) is to increase
the flow of successful trades, by minimizing the demands for liquidity of
cash especially." (Id. at 2.) The Specification describes that this purpose
can be achieved by "[g]rouping trades and aggregating the obligation to be
cleared for each user." (Id.) The Specification also states that the system
ensures that all trades in the selected group of trades can be cleared by
employing "a set of algorithms in order to determine a minimum [number]
of trades to be removed from the group in order to obtain a group in which
all trades are clearable." (Id. at 2-3.)
Representative Claim
Claims 1, 5, and 10 are independent. Claim 1, reproduced below, is
representative of the claimed subject matter:
1. A computer-implemented securities settlement
system for clearing matched trades for securities, comprising:
a computer-implemented input processor configured to
receive signals including trade information corresponding to
matched trades for securities matched in a securities trading
system, where each matched trade for a security includes a
participant trader, a counterparticipant trader, a security volume
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to be traded, and a price associated with the matched trade for a
security, and configured to convert each matched trade for a
security into a settlement obligation group, a settlement
obligation group including a list of debit and credit obligations
for each trader associated with the matched trade for a security
to be settled simultaneously for multiple traders;
a computer-implemented selector configured to select a
set of multiple settlement obligation groups to be cleared;
a computer-implemented aggregated clearing processor
configured to determine an aggregated obligation to be cleared
for each trader associated with the selected set of settlement
obligation groups;
a computer-implemented settlement processor configured
to settle the selected set of settlement obligation groups when
the aggregated obligation is cleared by the aggregated clearing
processor for every trader associated with the selected set of
settlement obligation groups;
a register configured to indicate each trader's obligation
limit; and
a comparator configured to compare each trader's
aggregated obligation with the trader's obligation limit;
wherein the computer-implemented selector is configured
to:
modify the selected set of settlement obligation groups to
provide a new selected set of settlement obligation groups when
the aggregated obligation is not cleared by the computer
implemented aggregated clearing processor for every trader
associated with the selected set of settlement obligation groups;
when a trader's obligation limit does not meet the
trader's aggregated obligation, modify the selected set of
settlement obligation groups to arrive at the new selected set of
settlement obligation groups where all obligations can be met
by all traders associated with the new selected set of settlement
obligation groups; and
modify the selected set of settlement obligation groups in
iterative fashion to determine a minimum number of settlement
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obligation groups required to be removed from the selected set
of settlement obligation groups in order to meet the aggregated
obligation for all traders associated with the new selected set of
settlement obligation groups.
REJECTION
Claims 1, 3, 5, 7-11, and 17-27 stand rejected under 35 U.S.C. § 101
as directed to patent-ineligible subject matter (abstract idea).
ANALYSIS
1. Principles of Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 573 U.S.
208,216 (2014) (citation omitted).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 75-77 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 573 U.S. at
217. The first step in the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. For
example, abstract ideas include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Id. at 218-20. The
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"directed to" inquiry asks not whether "the claims involve a patent-ineligible
concept," but instead whether, "considered in light of the specification, ...
'their character as a whole is directed to excluded subject matter."' Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (internal
citations omitted). In that regard, we determine whether the claims "focus
on a specific means or method that improves the relevant technology" or are
"directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery." McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
If, at the first stage of the Alice analysis, we conclude that the claim is
not directed to a patent-ineligible concept, it is considered patent eligible
under § 101 and the inquiry ends. Rapid Litig. Mgmt. Ltd. v. CellzDirect,
Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). In
other words, the second step is to "search for an "'inventive concept"'-i.e.,
an element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. at 217-18 (brackets in original) ( quoting
Mayo, 566 U.S. at 72-73). The prohibition against patenting an abstract
idea "'cannot be circumvented by attempting to limit the use of the formula
to a particular technological environment' or adding 'insignificant
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postsolution activity."' Bilski v. Kappas, 561 U.S. 593, 610-11 (2010)
(internal citation omitted).
The Patent and Trademark Office (the "Office") recently published
revised guidance on the application of 35 U.S.C. § 101. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50-57 (Jan. 7,
2019) ("2019 PEG"). Under the 2019 PEG, the Office first looks 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)). 3
See 2019 PEG at 52, 54--55. Only if a claim (1) recites a judicial exception,
and (2) does not integrate that exception into a practical application, does the
Office then look to whether the claim:
(3) adds a specific limitation 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 2019 PEG at 56. We follow this framework in our analysis herein.
3 All references to the MPEP are to Rev. 08.2017 (Jan. 2018).
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2. Appellants' Arguments4
Appellants contend the claims are eligible under the first step of Alice
because they are not directed to an abstract idea. (See App. Br. 12-15.)
More specifically, Appellants contend "the claims are directed to an
improved computer-implemented securities settlement system for clearing
matched trades for securities in a faster and more efficient way than in
conventional computer-implemented securities settlement systems." (Id. at
14.) Appellants characterize the claims as employing "new uses of a known
machine" (id. at 10; Reply Br. 3--4), and insist that "several different
computers or processors are used in combination in a new way to improve
the technical operation of electronic trading exchanges" (App. Br. 10).
Appellants further argue their claims do not merely recite
implementation of an abstract idea in software because they recite
"structure":
A person of ordinary skill in the art of computer-
implemented securities settlement systems would have
understood from the specification and figures that the function
block diagrams in Figures 10 and 11 represent a computer or
processor implementation which is not and cannot be surely
software. The independent claims also recite a register and a
comparator which are additional structure.
(App. Br. 13.) Citing the Federal Circuit's decision in Eefzsh, 5 Appellants
argue "[ t ]he claims in this application improve computer functionality in a
4 Appellants argue all pending claims (claims 1, 3, 5, 7-11, and 17-27) as
group, focusing on independent claim 1. (See App. Br. 10-19.) We
consider claim 1 to be representative of the claimed subject matter on appeal
and, therefore, we decide the rejection of all pending claims on the basis of
representative claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
5 Enfish, 822 F.3d at 1335.
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computer-implemented securities settlement system that recites specific
components performing detailed functions that specify how the matched
trades are cleared in a new, detailed, and inventive way." (App. Br. 15.)
With regard to Alice step two, Appellants argue that "[ e ]ven a cursory
review of claim 1 reveals that many detailed technical features are recited in
addition to the idea of trading and clearing respective obligations," namely,
"a computer-implemented input processor, a computer-implemented
selector, a computer-implemented aggregated clearing processor, a
computer-implemented settlement processor, a register, and a comparator,
each of which is configured to perform specific-rather than generic-
operations." (Id. at 16.) Appellants insist that the "specifically-recited,
computer-implemented elements" cannot be dismissed as "generic." (Id. at
18 (citing Hulu LLC v. iMTX Strategic LLC, Case CBM2015-00147 (PTAB
Nov. 30, 2015)); see also Reply Br. 5.) Appellants argue that these
recitations confirm that their claimed invention is "rooted in computer
technology." (App. Br. 16-17.) Citing the Federal Circuit's decision in
DDR Holdings, 6 Appellants argue that even claims directed to solving a
business challenge are patent eligible if the solution is rooted in computer
technology. (Id. at 17.)
Building on their premise that the claims are "directed to a very
particular technical implementation for performing 'trading and clearing
respective obligations,"' Appellants also argue "the risk of preemption in
this case is minimized." (Id. at 18; see also Reply Br. 7-8.) Relatedly,
Appellants argue "[t]he fact that the Examiner withdrew all prior art
6 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014).
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rejections is clear evidence that the claims contain an inventive concept."
(App. Br. 19.)
3. Analysis
a. Step One of Alice
Prong 1: Whether Claims Recite an Abstract Idea
Contrary to Appellants' contention that the "rejection fails to perform
the two-part analysis required under Alice and Mayo" (App. Br. 12), the
Examiner does perform that analysis. In particular, the Examiner finds the
claims are directed to the "settlement of securities trades," and further finds
"[t]rading and clearing respective obligations is a fundamental economic
practice in view of Alice v. CLS Bank where hedging with generic computers
was found to be a fundamental economic practice." (Final Act. 3; see also
Ans. 10-11, 15.) Thus, the Examiner concludes the claims are directed to an
abstract idea ( step one), and further finds that the claims do not recite
significantly more because the elements recited beyond the abstract idea are
"generic computing equipment" (step two). (Final Act. 3.)
We agree with the Examiner that claim 1 recites a fundamental
economic practice (i.e., "clearing matched trades for securities"), which the
Office Guidance identifies as a "certain method[] of organizing human
activity"-that is, an abstract idea. See 2019 PEG at 52. We disagree with
Appellants' assertion that the Examiner's framing the abstract idea as
"trading and clearing respective obligations" overgeneralizes the claimed
invention at too high a level of abstraction. (App. Br. 14.) Indeed, such a
characterization echoes the Supreme Court's characterization of the claims
before it in Alice, in which the Court discerned that the claims----despite a
lengthy recitation of detailed limitations-were properly characterized as
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"drawn to the abstract idea of intermediated settlement." Alice, 573 U.S. at
218.
Moreover, the Examiner did not merely consider a high-level
characterization of the claims in concluding they are directed to an abstract
idea, but instead reviewed the entirety of the claims. (See Final Act. 4.)
Consistent with the Examiner's analysis, we conclude claim 1 recites
limitations of receiving "trade information corresponding to matched trades
for securities" (that is, data identifying the securities to be traded, including
the identity of the security, the identity of the trader, a price, and a volume);
"select[ing] a set of multiple settlement obligation groups to be cleared"
(grouping the securities trades for clearing); "determin[ing] an aggregated
obligation to be cleared for each trader" (grouping the trades to determine a
net amount for each trader); "settl[ing] the selected set of settlement
obligation groups" ( completing the trades); and several steps directed to
"modify[ing] the settlement obligation groups" as needed to result in
obligations that can be cleared for every trader. (See App. Br. 22-23
(Claims App'x); see also Final Act. 4.)
We agree with the Examiner that the aforementioned recited steps are
steps of a fundamental economic practice-that is, settlement of securities
trades, which is a certain method of organizing human activity and, thus, is
an abstract idea. (See Final Act. 2--4); see also 2019 PEG at 52. Consistent
with the Examiner's conclusions, and contrary to Appellants' argument that
claim 1 is not similar to any idea previously found to be abstract, we see no
meaningful difference between Appellants' claims and similar claims that
courts have determined are directed to an abstract idea. See, e.g., Alice,
573 U.S. at 219 (holding the concept of intermediated settlement is an
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abstract idea directed to a "fundamental economic practice long prevalent in
our system of commerce" (citation omitted)); see also buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1353-54 (Fed. Cir. 2014) (citing cases where
contractual relations at issue constituted fundamental economic practices,
and noting that forming or manipulating economic relations may involve an
abstract idea); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362
(Fed. Cir. 2015) ("automatic pricing method and apparatus for use in
electronic commerce"); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (explaining
that claims directed to "the mere formation and manipulation of economic
relations" and "the performance of certain financial transactions" have been
held to involve abstract ideas); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014) (holding that claims reciting a method of using
advertising as an exchange or currency are directed to an abstract idea).
Although Appellants heavily emphasize that their claimed invention is
"computer-implemented" (App. Br. 13-15), this fact does not impart patent-
eligibility to the claims, as the recitation of "computer-implemented" merely
amounts to a statement to use a computing system to process the securities
settlement transactions. As the Supreme Court has explained, "if a patent's
recitation of a computer amounts to a mere instruction to 'implemen[t]' an
abstract idea 'on ... a computer,' that addition cannot impart patent
eligibility." Alice, 573 U.S. at 223 (quoting Mayo, 566 U.S. at 84).
In summary, under prong 1 of Step 2A in accordance with the 2019
PEG, we agree with the Examiner's conclusions that the claims recite an
abstract idea in the form of a fundamental economic practice. We tum now
to prong 2.
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Prong 2: Whether the Claims Integrate the Abstract
Idea Into a Practical Application 7
In accordance with prong 2 of Step 2A of the 2019 PEG, the claims
are evaluated to determine whether they recite additional elements beyond
the abstract idea, and, if so, the additional elements are evaluated to
determine whether they integrate the abstract idea into a practical
application. 2019 PEG at 54. The 2019 PEG at page 55 provides the
following exemplary considerations of whether an additional element:
• "reflects an improvement in the functioning of a computer, or
an improvement to other technology or technical field";
• "applies or uses a judicial exception to effect a particular
treatment or prophylaxis for a disease or medical condition";
• "implements a judicial exception with, or uses a judicial
exception in conjunction with, a particular machine or
manufacture that is integral to the claim";
• "effects a transformation or reduction of a particular article [ or
thing] to a different state or thing"; or
• "applies or uses the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception
to a particular technological environment."
7 We acknowledge that some of these considerations may be properly
evaluated under the second step of Alice (Step 2B of Office Guidance as
identified in the 2019 PEG). Solely for purposes of maintaining consistent
treatment within the Office, we evaluate them under the first step of Alice
(Step 2A of Office Guidance as identified in the 2019 PEG). See 2019 PEG
at 54--55.
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The 2019 PEG also highlights certain examples in which courts have
held that "a judicial exception has not been integrated into a practical
application," such as where the claims "merely use[] a computer as a tool to
perform an abstract idea" or the additional element adds "insignificant extra-
solution activity" to the abstract idea. 2019 PEG at 55 ( emphasis added).
Here, consistent with the Examiner's findings, we find the claims do
not include an improvement to another technology or technical field, a
treatment for a medical condition, an improvement to the functioning of the
computer itself, a transformation of an article, or meaningful limitations
beyond generally linking the use of an abstract idea to a particular
technological environment. (See Final Act. 3; see also Ans. 10-11, 15.)
Rather, the claims merely recite limitations that are instructions to
implement the abstract idea on a computer and require no more than generic
computer components ( such as a memory and a processor) to perform
generic functions. (See Final Act. 3, 5.) Thus, the focus of the claims is not
on an improvement in computers as tools, but on certain abstract ideas that
use computers as tools. (See id.)
In arguing that their claims are directed to an improvement to
computer-related technology or an improvement in a technological field (see
App. Br. 14), Appellants provide no persuasive arguments, and cite no
evidence (such as by reference to their Specification), that their claimed
invention requires any specialized technology or relies upon technological
improvements. Rather, Appellants essentially concede that their invention is
practiced on conventional hardware, as Appellants repeatedly assert that
their claims are patent-eligible as "new uses of a known machine." (Id. at
10, 12, 14 ( emphasis added).) That Appellants' invention contemplates
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known computer hardware is underscored by the fact that, although the
claims are to a "computer-implemented" system, Appellants' Specification
provides no technological details regarding the underlying computer
components, as the Examiner aptly notes. (See Final Act. 3, 5; Ans. 10.)
Thus, Appellants' argued improvement (i.e., a "faster and more efficient
way" of "clearing matched trades for securities" (App. Br. 14)) is not due to
any improvement in the underlying technology, but instead is an
improvement to the underlying fundamental economic practice of clearing
trades in securities transactions by grouping the transactions to aggregate the
obligations.
We are also not persuaded by Appellants' argument that the claims
are similar to the claims in DDR Holdings. (App. Br. 17.) In DDR
Holdings, the disputed claims solved an Internet-specific problem (i.e., third-
party merchants luring a host website's visitor traffic away from the host
website in response to clicking on a merchant's advertisement link displayed
on the host site) with an Internet-based solution (i.e., generating a composite
web page displaying product information from the third-party merchant, but
retaining the host website's "look and feel") that was "necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." DDR Holdings, 773 F.3d at 1257-58.
That is not the case here. Instead, consistent with the Examiner's findings,
the claims merely recite an improvement to the underlying fundamental
economic practice of clearing trades in securities transactions. (See Final
Act. 3.)
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We are also not persuaded that Appellants' claims are similar to the
claims inBASCOM. 8 (See App. Br. 19.) In BASCOM, our reviewing court
noted that an inventive concept can be found in a non-conventional and non-
generic arrangement of known, conventional pieces. See BASCOM,
827 F.3d at 1350. However, the claims before us are distinguishable from
those in BASCOM. In BASCOM, the system claims were directed to a
"content filtering system for filtering content retrieved from an Internet
computer network," which the court held were directed to an abstract idea.
Id. at 1348--49. The court further held the claims included an inventive
concept in the ordered combination of system components, including a local
client computer and a remote ISP server connected to the client computer
and Internet computer network providing for "the installation of a filtering
tool at a specific location, remote from the end-users, with customizable
filtering features specific to each end user." Id. at 1350.
As noted above, Appellants have failed to establish that their claims
include a similar or analogous arrangement or "ordered combination" of
components. Instead, Appellants rely on the absence of prior-art rejections
as evidence that the claimed invention is non-conventional and non-generic.
(See App. Br. 19.) However, this argument conflates the standards of
novelty under 35 U.S.C. § 102 and non-obviousness under 35 U.S.C.
§ 103(a) with the requirements of patent-eligible subject matter under 35
U.S.C. § 101. A lack of prior art does not direct a claim towards statutory
subject matter. As the Supreme Court has said, "[t]he 'novelty' of any
element or steps in a process, or even of the process itself, is of no relevance
8 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016).
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in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter." Diamond v. Diehr,
450 U.S. 175, 188-89 (1981).
We are also not persuaded by Appellants' argument that the claims
are similar to the claims in Amdocs. 9 (Reply Br. 7.) Unlike the claims in
that case, which provided an "unconventional technological solution ... to a
technological problem" that "improve[ d] the performance of the system
itself' (Amdocs, 841 F.3d at 1302), Appellants' claims merely recite an
improvement to the underlying fundamental economic practice of clearing
trades in securities transactions, as previously described.
In their Reply Brief, Appellants raise a new argument that "[t]he
claimed computer-implemented securities settlement system is also
improved using new data structures defined by settlement obligation groups
and sets of settlement obligation groups as specifically set forth in the
claims." (Reply Br. 4 ( emphasis added); see also id. at 5 ("A settlement
obligation group is a specifically defined data structure including a list of
debit and credit obligations for each trader .... ").)
We find nothing in the Examiner's Answer that would have prompted
this new argument raised by Appellants for the first time in the Reply Brief.
Rather, the Examiner's stated reasoning in the Final Action is identical to the
reasoning stated in the Answer. Therefore, Appellants' new argument
regarding new "data structures" is not entitled to our consideration. Optivus
Tech., Inc. v. Ion Beam Applications S.A., 469 F.3d 978, 989 (Fed. Cir.
2006) ( argument raised for the first time in the reply brief that could have
9 Amdocs (Israel) Ltd v. Openet Telecom, Inc., 841 F.3d 1288, 1032 (Fed.
Cir. 2016).
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been raised in the opening brief is waived); accord Ex parte Borden, 93
USPQ2d 1473, 1473-74 (BPAI 2010) (informative opinion) (absent a
showing of good cause, the Board is not required to address an argument
newly presented in the reply brief that could have been presented in the
principal brief on appeal).
Nevertheless, even considering that argument, we are not persuaded
of Examiner error. Appellants provide no persuasive arguments or evidence
to support the contention that grouping the selected data ( a "list of debit and
credit obligations for each trader associated with the matched trade for a
security to be settled simultaneously for multiple traders") results in a "new
data structure" as opposed to a standard data structure with possibly novel
content. Appellants do not, for example, persuasively argue or demonstrate
that this alleged data structure is a "specific type of data structure designed
to improve the way a computer stores and retrieves data in memory." Cf
Enfish, 822 F.3d at 1338 (addressing claims reciting a "self-referential
table").
Thus, we conclude the claims do not integrate the abstract idea into a
practical application. Accordingly, we conclude the claims are directed to an
abstract idea in step one of the Alice analysis.
b. Step Two of Alice
Regarding step two of the Alice analysis, the Examiner finds the
elements of the claims, when considered individually or in combination, do
not recite significantly more than the abstract idea. (See Final Act. 2-3.)
With respect to whether the claims recite elements that are well-understood,
routine, and conventional, the Examiner further finds the combination of
elements in the claims other than the abstract idea amount to no more than a
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recitation of "generic computing equipment such as 'processors' or
'selectors."' (Id. at 3.) The Examiner further notes that the Specification
lacks particular disclosure regarding the recited "processor[ s ]" that "would
assist in making the elements further technological." (Id. at 5.) In other
words, the Examiner finds, and we agree, that the lack of specific disclosure
in the Specification as to any of the computer components supports the
finding that such components are generic and not specialized technology that
could lend inventive weight. (See id.; see also Ans. 10.) As also noted
supra, this finding is also supported by Appellants' repeated characterization
of their invention as a "new use[] of a known machine." (App. Br. 10, 12;
Reply Br. 4.)
We are also not persuaded by Appellants' arguments that the absence
of any prior-art rejections under 35 U.S.C. §§ 102 and/or 103 is evidence
that the steps recited in the claims are not well-understood, routine, or
conventional. (See App. Br. 19.) As previously described, this argument
conflates the standards of novelty under 35 U.S.C. § 102 and non-
obviousness under 35 U.S.C. § 103(a) with the requirements ofpatent-
eligible subject matter under 35 U.S.C. § 101. Thus, although our reviewing
court has held that "[ t ]he patent eligibility inquiry may contain underlying
issues of fact" (see Berkheimer v. HP Inc., 881 F.3d 1360, 1365
(Fed. Cir. 2018)), we determine that Appellants' arguments are insufficient
to raise an issue of fact requiring the Examiner to present additional
evidence showing that any aspect of the claims is well-understood, routine,
and conventional in the art.
The other relevant considerations regarding whether the claims are
directed to something significantly more than an abstract idea have
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Appeal2017-004876
Application 11/724,313
previously been discussed with respect to the first step of Alice. Thus, we
conclude the claims are not directed to something significantly more than the
abstract idea.
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection of claim 1 under 35 U.S.C. § 101. For the same
reasons, we also sustain the rejection of claims 3, 5, 7-11, and 17-27, which
are not separately argued, under 35 U.S.C. § 101.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 3, 5,
7-11, and 17-27 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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