Ex Parte Silverman et al

Patent Trials and Appeals BoardMar 29, 2019

11181956 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. 11/181,956 132787 7590 Docket Clerk-GOLD P.O. Drawer 800889 Dallas, TX 75380 FILING DATE FIRST NAMED INVENTOR 07/14/2005 Andrew F. Silverman 04/02/2019 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. GOLDll-00067 6082 EXAMINER BORLING HAUS, JASON M ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 04/02/2019 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): patents@munckwilson.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW F. SILVERMAN and JATIN SURYA W ANSHI Appeal2018-001090 Application 11/181,956 Technology Center 3600 Before ELENI MANTIS MERCADER, MATTHEW J. McNEILL, and JASON M. REPKO, Administrative Patent Judges. REPKO, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-001090 Application 11/181,956 STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1, 5, 6, 8-10, 14, 15, 17-19, 23, 24, and 26-32. App. Br. 1.2 Claims 2--4, 7, 11-13, 16, 20-22, and 25 have been canceled. 3 Claims 30-32 were added in an amendment entered after the final rejection. Adv. Act. 1, item 7. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. THE INVENTION Appellants' invention executes small security trade orders in an electronic-trading platform. Spec. 1: 10-12. Claims 1, 10, and 19 are independent. Claim 1 is reproduced below: 1. A method comprising: receiving by a processor a security trade order comprising a limit order, the security trade order also identifying a security to be traded and an order size, wherein the order size for the security to be traded is less than or equal to 0.1 percent of a traded average daily volume (ADV) for the security to be traded; determining, by the processor based on a volatility of the security to be traded and a frequency with which the security is 1 According to Appellants, the real party in interest is Goldman, Sachs and Co. App. Br. 2 2 Throughout this opinion, we refer to the Final Office Action ("Final Act."), mailed December 7, 2016; the Advisory Action ("Adv. Act."), mailed on March 8, 2017; the Appeal Brief ("App. Br."), filed May 8, 2017; the Examiner's Answer ("Ans."), mailed September 11, 2017; and the Reply Brief ("Reply Br."), filed November 13, 2017. 3 Appellants canceled claims 4, 13, and 22 in an amendment submitted with after the Examiner's Final Rejection. See After-Final Consideration Program Request 9, filed February 7, 2017. The Examiner entered the amendment. Adv. Act. 1, item 7. 2 Appeal2018-001090 Application 11/181,956 traded, a specified period of time within which to attempt to execute the security trade order, wherein the specified period of time includes a minimum wait time indicative of a minimum period of time to expire before attempting to execute the security trade order and a maximum wait time indicative of a maximum period of time to expire before converting the limit order to a market order, wherein each of the minimum wait time and the maximum wait time is determined by multiplying a historical average trade time for the security by a respective predetermined factor; executing, by the processor, at least a first portion of the security trade order within the specified period of time; converting, by the processor, the limit order to the market order in response to an expiration of the maximum period of time and at least a second portion of the security trade order not being executed; and executing, by the processor, at least the second portion of the security trade order after the conversion to the market order. App. Br. 40. THE EVIDENCE The Examiner relies on the following as evidence: Cushing et al. US 7,613,647 Bl Nov. 3, 2009 THE REJECTI0NS 4 Claims 1, 5, 6, 8-10, 14, 15, 17-19, 23, 24, and 26-32 5 stand rejected under 35 U.S.C. Â§ 101 as directed to patent-ineligible subject matter. Adv. Act. 2-3; Ans. 2-3. 4 Although they appear in the heading of the rejections (Ans. 2-8), claims 4, 13, and 22 are omitted here because they were canceled. See supra n.3. 5 Appellants treat claims 30-32 as rejected under 35 U.S.C. Â§ 101. See App. Br. 26-27; Reply Br. 8-9. Likewise, in the Answer, the Examiner refers to "the dependent claims." Ans. 13. So although the Examiner does 3 Appeal2018-001090 Application 11/181,956 Claims 1, 5, 6, 8-10, 14, 15, 17-19, 23, 24, and 26-30 stand rejected under pre-AIA 6 35 U.S.C. Â§ 112, second paragraph, as being indefinite. Adv. Act. 3--4; Ans. 3---6. Claims 1, 5, 6, 8-10, 14, 15, 17-19, 23, 24, and 26 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Cushing. Final Act. 8-10; Ans. 6-8. I. THE REJECTION UNDER 35 U.S.C. Â§ 101 A. Principles of Law An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. However, the Supreme Court has long interpreted 35 U.S.C. Â§ 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 not include claims 30-32 (id. at 2), in the rejection's heading, we understand claims 30-32 to be rejected under 35 U.S.C. Â§ 101. 6 This application is being examined under the statute before the Leahy- Smith America Invents Act (AIA), Pub. L. No. 112-29, Â§ 3, 125 Stat. 284, 285-93 (2011) was enacted. 4 Appeal2018-001090 Application 11/181,956 risk."); see also Bilski v. Kappas, 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); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 67---68 (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 183 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 191 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). Having said that, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract ... is not accorded the protection of our patent laws, ... and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. ( 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 5 Appeal2018-001090 Application 11/181,956 to a known structure or process may well be deserving of patent protection."). If the claim is "directed to" an abstract idea, we tum 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. "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]."' J d. (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. The PTO recently published revised guidance on the application of Â§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (USPTO Jan. 7, 2019) ("Guidance"). 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 activities such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP Â§Â§ 2106.05(a}-(c), (e}-(h) (9th ed. Rev. 08.2017, Jan. 2018)). 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: 6 Appeal2018-001090 Application 11/181,956 (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP Â§ 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 Guidance, 84 Fed. Reg. at 56. B. Claims 1, 10, and 19 1. The Examiner's Rejection The Examiner rejects representative7 claim 1 under 35 U.S.C. Â§ 101 because the claim is directed to an abstract idea and does not recite additional elements that amount to significantly more than the judicial exception itself. Final Act. 2-3; Adv. Act. 2-3; Ans. 2-3. For the reasons discussed below, we are not persuaded that the Examiner erred. 2. The Recited Judicial Exception Viewing the Examiner's rejection through the lens of the Guidance, we first determine whether the claim recites a judicial exception. See Guidance, 84 Fed. Reg. at 54 (discussing step 2A, prong one). Claim 1 recites a method that executes a security-trade order. See App. Br. 40. Executing a security trade order includes (1) 7 Appellants argue claims 1, 10, and 19 as a group. See, e.g., App. Br. 19 (" ... the Examiner has failed to establish a prima facie rejection of Claim l and its dependent claims. For similar reasons, the Examiner has failed to establish a prima facie rejection of Claims 10 and 19 and their dependent claims. Claims 1, 10 and 19 are statutory under Â§ 101, and the rejection underÂ§ 101 is clear error."). So we select independent claim 1 as representative of claims 1, 10, and 19. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). 7 Appeal2018-001090 Application 11/181,956 receiving "a security trade order comprising a limit order, the security trade order also identifying a security to be traded and an order size," (2) determining "a specified period of time within which to attempt to execute the security trade order," (3) executing "at least a first portion of the security trade order within the specified period of time," ( 4) converting "the limit order to the market order in response to an expiration of the maximum period of time and at least a second portion of the security trade order not being executed," and (5) executing "at least the second portion of the security trade order after the conversion to the market order." Id. Under the broadest reasonable interpretation, these limitations recite executing a security trade order because the recited operations may be performed by a trader placing orders. For example, executing the order includes receiving information about the order, which is recited in limitation (1 ). Next, a decision must be made about when to execute the order. This decision is recited in limitation (2). With this information, the trade must be executed, as recited in limitation (3). Limitations (4) and (5) reflect conditional actions that can occur when a maximum time expires. In this case, the market order is converted to a limit order and executed. The recited concept of executing a security-trade order is similar to other fundamental economic practices, like hedging (Bilski, 561 U.S. at 611 ), local payment processing for goods purchased remotely (Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378-79 (Fed. Cir. 2017) ), and offer-based price optimization ( OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015)). For example, the claim in Bilski involved "initiating a series of transactions" between 8 Appeal2018-001090 Application 11/181,956 commodity providers and consumers. Bilski, 561 U.S. at 599. Claim 1 's recited concept is similarly a foundational or basic concept relating to the economy or commerce. See also Guidance, 84 Fed. Reg. at 52 n.13 (citing various cases dealing with fundamental economic practices). The Guidance extracts and synthesizes key court-identified concepts into three subject-matter groupings that are included in the abstract-idea exception. Id. at 52. Of these subject-matter groupings, fundamental economic practices fall within the grouping of certain methods of organizing human activity. See id. For all the above reasons, claim 1 recites an abstract idea. 3. Integration into a Practical Application Because claim 1 recites a judicial exception, we consider whether the recited judicial exception is integrated into a practical application. Guidance, 84 Fed. Reg. at 54--55 (discussing step 2A, prong two). "Only when a claim recites a judicial exception and fails to integrate the exception into a practical application, is the claim 'directed to' a judicial exception." Id. at 51. We use the term "additional elements" to refer to claim features, limitations, or steps that the claim recites beyond the judicial exception. Id. at 55 n.24. The additional elements in claim 1 include a processor and a computing environment for sending and receiving data. For the reasons discussed below, considering these additional elements, claim 1 does not integrate the judicial exception into a practical application. See id. at 55 nn.25 & 27-32 (citing MPEP Â§Â§ 2106.05(a}-(c), (e}-(h)). Appellants argue that the claim uses "specific data and specific technology in a way that extends the claims far beyond any alleged abstract 9 Appeal2018-001090 Application 11/181,956 idea." App. Br. 18. In Appellants' view, the claimed method is "specifically designed to achieve and improved technological result." Id. at 13. We disagree. Claim 1, as a who le, does not improve the recited processor's functioning or any other technology for that matter. See MPEP Â§ 2106.05(a). Rather, the problem solved is executing a desired trading strategy. Spec. 4:9--11. According to the Specification, "there exists a need to efficiently and cost effectively execute trading of small size security orders to achieve a desired trading strategy." Id. at 2:9--10. The claimed solution uses multiple wait times and considers historical average trade times. See, e.g., App. Br. 14, Reply Br. 5. That is, the problem and solution here are non-technical. The recited processor is generic. See Spec. 13 ( describing a programmed processor). Apart from this processor, claim 1 does not recite any other combination of devices or computer components. The processor merely gathers data and performs basic functions. For example, executing a security-trade order requires a step for receiving that order (limitation (1 ), supra), which is mere data gathering. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (explaining that obtaining transaction data for later verification was insufficient to render the claim eligible in that case). Also, claim 1 uses the processor's basic calculating function to determine times (limitation (2), supra), convert the order (limitation (4), supra) and execute the trading strategy (limitations (3) and ( 5), supra). These uses indicate that claim 1 's method is not rooted in computer technology. In this regard, claim 1 is unlike certain patent-eligible 10 Appeal2018-001090 Application 11/181,956 technological improvements. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257-59 (Fed. Cir. 2014). Rather, the processor's role here bolsters the conclusion that the problem and solution relate to the purportedly improved trading strategy. Nor does claim 1 apply or use the abstract idea in a "particular machine." See Bilski, 561 U.S. at 604. A general-purpose computer that merely executes the judicial exception, as is the case here (Spec. 13), is not a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17 (Fed. Cir. 2014), cited in MPEP Â§ 2106.05(b)(I). The recited processor is most like a tool to execute the strategy. Guidance, 84 Fed. Reg. at 55; see also MPEP Â§ 2106.05([). The Guidance also discusses other ways that an additional element may integrate the exception into a practical application----e.g., a particular transformation, a particular treatment of a disease, among other things. See id. Claim 1, though, does not recite such features. In Appellants' view, "[ c ]laim 1 recites multiple wait times, multiple security trade order executions, a conversion of a limit order to a market order, and a consideration of historical average trade times for a security," which is not an abstract idea. App. Br. 13; see also Reply Br. 3. To be sure, claim 1 recites several "wherein" clauses that further limit the order size and the recited time period. But limiting the order size and the time period in this way does not make the claims any less abstract. "A narrow claim directed to an abstract idea, however, is not necessarily patent- eligible." Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016). So even if the recited size is narrowly claimed as 0.1 percent of ADV and the calculated time is limited by the recited formula, 11 Appeal2018-001090 Application 11/181,956 claim 1, nevertheless, recites executing a security-trade order, albeit one with a particular size and executed at a particular time. See Adv. Act. 3. For all these reasons, claim 1----considered as a whole----does not integrate the judicial exception into a practical application. See Guidance, 84 Fed. Reg. at 54--55. Thus, claim 1 is directed to the judicial exception. 4. The Inventive Concept Because claim 1 is directed to the judicial exception, we consider whether the claim provides an inventive concept. Id. at 56 (discussing step 2B). For the reasons discussed below, we agree with the Examiner that claim 1 lacks a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" activity in the field. Adv. Act. 3. Appellants argue that "[ o ]ne cannot run down to the local electronics store and buy a computer that performs the method of Claim 1." App. Br. 15. According to Appellants, "the instant claims do not merely recite the steps one would ordinarily perform in performing execution strategies for electronic trading of stocks and other financial instruments." Reply Br. 2. But it is not "enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. Â§Â§ 102 and 103." SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018); see also Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016) (explaining that "[ e ]ven assuming" that a particular claimed feature was novel, the problem of abstractness was not avoided). Rather, to determine whether claim 1 provides an inventive concept, we consider the additional elements, individually and in combination, to determine whether they (1) add a 12 Appeal2018-001090 Application 11/181,956 specific limitation beyond the judicial exception that is not "well- understood, routine, conventional" activity in the field or (2) simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Guidance, 84 Fed. Reg. at 56. Here, the Specification explains that electronic-trading platforms are conventional. Spec. 1: 14--15. Electronic-trading platforms, generally, allow traders to buy and sell orders using a computer. Id. at 1: 15-17. According to the Specification, many electronic-trading platforms and management networks market information to traders and facilitate automated or semi- automated trading functions. Id. at 2:5-8. Claim 1 does not recite anything other than conventional computer technology, including conventional electronic-trading technology. See id. at 1:14--15, 2:5-8. As noted by the Examiner, "[a] computer system receiving transmitted data is a conventional and routine computerized activity." Adv. Act. 3 (citing Alice, 573 U.S. at 226). We also agree with the Examiner that "[ t ]he fact that the data comprises a security trade order does not alter the fact that receipt of transmitted data by a computer is a conventional and routine computerized activity." Id. Appellants essentially argue the trading strategy itself is not well- understood, routine, and conventional. See, e.g., App. Br. 16, Reply Br. 6-8. For instance, Appellants argue that "the operations recited in Claim 1 combine to create an ordered combination that is not well-understood, routine, or conventional and that is not previously known to the industry." App. Br. 16. According to Appellants, claim 1 recites a "specific set of 13 Appeal2018-001090 Application 11/181,956 operations using specific data, specific objects (such as security trade orders and limit orders), and specific periods of time." Id.; see also Reply Br. 7. Yet these limitations are to the trading strategy itself, which is the abstract idea. The "'inventive concept' cannot be the abstract idea itself." Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (denial of rehearing en bane) (Moore, J., concurring). "What is needed is an inventive concept in the non-abstract application realm." SAP Am., 898 F.3d at 1168. For all these reasons, claim 1 lacks an inventive concept. 5. Other Arguments Appellants argue that claim 1 does not preempt all electronic-trading strategies. App. Br. 13-14, 17. According to Appellants, "[n]umerous other techniques could be used for execution strategies for electronic trading of stocks and other financial instruments, such as those that do not use multiple wait times or those that do not consider historical average trade times for a security." Id. at 14; see also Reply Br. 5. Although the extent of preemption is a consideration in our analysis, we agree with the Examiner that the absence of complete preemption is not dispositive here. See, e.g., Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility."), cited in Adv. Act. 3. "[Q]uestions on preemption are inherent in and resolved by the Â§ 101 analysis" applied here. Id. So although there may be other ways to execute security trade orders, this does not render the subject matter patent eligible in this case. 14 Appeal2018-001090 Application 11/181,956 6. Conclusion On this record, Appellants have not persuaded us of error in the rejection of representative claim 1 under 35 U.S.C. Â§ 101. Thus, we sustain the rejection of claims 1, 10, and 19, which are argued as a group. See supra n.3. C. Claims 5, 6, 14, 15, 23, and 24 Appellants argue that the Examiner has not discussed claims 5, 14, and 23. App. Br. 19. According to Appellants, "it cannot be said that each of Claims 5, 14, and 23 is an abstract idea or that the elements recited in Claims 5, 14, and 23 are purely conventional." Id. Appellants argue that claims 5, 14, and 23 "combine with their parent claims to create an ordered combination." Id. at 20. Appellants argue that each claim recites more than the abstract idea. Id.; see also Reply Br. 8-9. Appellants present similar arguments for claims 6, 15, and 24. Compare App. Br. 19-20, with App. Br. 20-21. We note that the Examiner does indeed discuss the dependent claims. Specifically, the Examiner determines that although "the dependent claims might be improving the non-technological discipline of execution strategies, such improvements are directed toward improving the abstract idea" and "[t]he claimed invention does not improve the computer itself, or any other technology or technical field." Ans. 13. We agree with the Examiner's determination. Claim 5 recites, in part, "the specified period of time is determined to facilitate capturing an improved spread based on movement from a limit price of the limit order." App. Br. 41. Claims 14 and 23 recite similar limitations. See id. at 43, 45. To be sure, claims 5, 14, and 23 are narrower 15 Appeal2018-001090 Application 11/181,956 than claim 1. But like claim 1, claims 5, 14, and 23 recite executing a security trade order. Specifically, these claims further limit the time period instead of, for example, adding a technical solution to integrate the abstract idea recited in claim 1. In this way, the dependent claims are no less abstract than claim 1. So the reasoning presented above about claim 1 applies equally to claims 5, 14, and 23. The same reasoning applies to claim 6, 15, and 24. In particular, claim 6 depends from claim 5 and recites, in part "the captured spread comprises an effective spread that is a difference between an execution price for the trade and a mid price for the security at that time the security trade order was received." Id. at 41. Claims 15 and 24 recite similar limitations. Id. at 43, 45. Like claim 5, Appellants have not persuasively shown why limiting the captured spread to include an effective spread renders the recited subject matter patent eligible. See id. at 20-21. Instead, as the Examiner points out, these claims at most limit the execution strategy but do not recite an improvement to a technical field or otherwise integrate the judicial exception into a practical application. See Ans. 13. Nor does narrowing the abstract idea in this way supply an inventive concept. See SAP Am., 898 F.3d at 1168 ( discussed supra). Thus, we sustain the rejection of claims 5, 6, 14, 15, 23, and 24 under 35 U.S.C. Â§ 101. D. Claims 8, 9, 17, 18, and 26-32 Appellants argue that the subject matter in claims 8, 17, and 26 is patent eligible for reasons similar to those discussed with respect to claims 5, 6, 14, 15, 23, and 24. See App. Br. 21-22; Reply Br. 8-9. Appellants 16 Appeal2018-001090 Application 11/181,956 further argue "it is not merely the elements of Claims 8, 1 7, and 26 standing alone that must be considered using the two-step analysis," but rather "[i]t is the combination of each dependent claim and its parent claim that must be considered using the two-step analysis." App. Br. 22. Appellants present similar arguments for claims 9, 18, and 27-29. Id. at 23-26. As to claims 27-29, Appellants add that "the Examiner is merely looking to see whether each step can be implemented using a generic computer, not whether the specific steps add significantly more to the alleged abstract idea." Id. at 25. Appellants, though, have not shown that the Examiner erred in concluding that claims 8, 9, 17, 18, and 26-29 further limit the execution strategy without improving "the computer itself, or any other technology or technical field." Ans. 13. Nor have Appellants shown that the additional elements presented in the dependent claims otherwise supply an inventive concept missing from the corresponding parent claims. For instance, claims 8, 9, 17, 18, and 26 further limit the order size, and claims 27-32 further limit the time period. These claims, however, do not recite limitations that amount to significantly more than the judicial exception itself. Claim 8 recites, in part, "dividing the order size of the security trade order into two round lots." App. Br. 41. Claims 17 and 26 recite similar limitations. Id. at 43. Claim 9 further limits claim 8 by adding the step of "setting a limit price for one of the round lots." Id. at 41. Claim 18 recites similar limitations. Id. at 43. Claim 27 recites, in part, "receiving an indication of a level of aggressiveness for executing the security trade order; and adjusting at least one of the minimum wait time or the maximum wait time based on the received level of aggressiveness." Id. at 45. Claims 28 and 29 recite similar limitations. Id. at 46. Lastly, claim 30 recites at 17 Appeal2018-001090 Application 11/181,956 least one of the minimum wait time or the maximum wait time is determined based at least partially on user input. Id. Claims 31 and 32 recite similar limitations. Id. at 46-47. Like claim 1, these additional limitations on the order size and the time do not make the claims any less abstract. The processor in these claims also operates as a tool to execute the strategy, which is insufficient to integrate the judicial exception into a practical application in this case. Guidance, 84 Fed. Reg. at 55; see also MPEP Â§ 2106.05(Â±). Here, the processor does not alter or affect how the order size is divided or how the time is calculated. In this way, the processor merely supplies the technological environment in which to apply a judicial exception and does not integrate the exception into a practical application. Id.; see also MPEP Â§ 2106.05(h). As for the inventive concept, "[w]hat is needed is an inventive concept in the non-abstract application realm," which is absent here. SAP Am., 898 F.3d at 1168. On this record, claims 8, 9, 17, 18, and 26-32 do not amount to significantly more than the judicial exception itself. Thus, we sustain the rejection of claims 8, 9, 17, 18, and 26-32 under 35 U.S.C. Â§ 101. II. THE INDEFINITENESS REJECTION A. Claims 1, 5, 6, 8-10, 14, 15, 17-19, 23, 24, 26, and 28-30 For multiple reasons, the Examiner rejects claim 1 as indefinite under Â§ 112, second paragraph. Final Act. 5-7. As we discuss below, we agree with Appellants that the Examiner has erred in this regard. App. Br. 10-13. 18 Appeal2018-001090 Application 11/181,956 1. "a security trade order" Claim 1 recites, in part, "a security trade order comprising a limit order." Id. at 40. In the Examiner's view, this limitation renders claim 1 indefinite. According to the Examiner, "based upon the specification, the method is only processing one order - (i) a limit order, a limit order for a security but a limit order, nonetheless." Ans. 3. The Examiner, though, has not shown why this renders claim 1 indefinite. Essentially, the Examiner's basis for rejecting claim 1 is that the claim is broader than the Specification's example. Yet "[b ]readth is not indefiniteness." In re Gardner, 427 F.2d 786,788 (CCPA 1970); see also MPEP Â§ 2173.04. And by equating claim 1 's breadth with indefiniteness here, the Examiner erred. See App. Br. 28-29. 2. "attempt" Claim 1 recites, in part, "a specified period of time within which to attempt to execute the security trade order." Id. at 40. In the Examiner's view, "[a]n Applicant can recite that a function is performed" but "an Applicant cannot 'attempt' or 'try to' perform a function." Ans. 4. But the limitation at issue covers the attempt. The recited attempt is a separate act from executing the trade itself. See, e.g., Spec. 14:26-15: 13 (describing attempts). Thus, we agree with Appellants that the Examiner has not explained why this limitation is indefinite. App. Br. 30. 3. "frequency" Claim 1 recites, in part, "a frequency with which the security is traded" and "a historical average trade time." Id. at 40. According to the Examiner, "these claim terms appear to be the same thing." Ans. 4. To support this point, the Examiner quotes the Specification, which states that 19 Appeal2018-001090 Application 11/181,956 "trading frequency may be represented by an average time between trades of the security over a period of time." Id. (quoting Spec. 6:8-10). The next sentence, however, provides an example of frequency, which reveals the error in the Examiner's position: "For example, an average number of trades for a security, XYZ, over a 10 day period may be included in or provided to parameter factory data 114." Spec. 6:10-11 (emphasis added). That is, frequency here is the number of trades over a time period, not an average time. 4. "historical average trade time" The Examiner makes a similar error regarding calculating the minimum and maximum wait time. See Ans. 5 ( discussing "multiplying the average trade time (i.e. frequency) by a predetermined factor"). According to the Examiner, the claims do not recite that the calculation of the maximum wait time (i.e. average trade time [ x] predetermined factor) would necessarily result in a time before the end of the specified time period calculation (i.e. based on volatility and frequency). If so, there is a missing claim element/step that would ensure that those figures come out allowing for such a relationship. Id. Here, the Examiner mistakes breadth for indefiniteness. We see no reason to require additional steps to ensure the "figures come out" as described. Id. The Examiner appears to be confusing frequency with time, as discussed above. Thus, we agree that the Examiner erred in concluding that this limitation renders the claim indefinite. App. Br. 30-31. 5. "in response to" Claim 1 recites, in part, "converting, by the processor, the limit order to the market order in response to an expiration of the maximum period of 20 Appeal2018-001090 Application 11/181,956 time and at least a second portion of the security trade order not being executed." Id. at 40. (emphasis added). The Examiner finds that this limitation is conditional and "Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e. the method stops)." Ans. 5. To be sure, "[i]f the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed." Ex parte Schulhauser, Appeal 2013-007847, 2016 WL 6277792, at *5 (PTAB April 28, 2016) (precedential) (quoting Cybersettle, Inc. v. Nat'! Arbitration Forum, Inc., 243 F. App'x. 603, 607 (Fed. Cir. 2007) (unpublished)); see also MPEP Â§ 2111.04(II) ("CONTINGENT LIMITATIONS"). But the Examiner has not sufficiently explained why the conditional limitation here renders the claim indefinite. As Appellants argue, a conditionally performed step, in itself, does not render a claim indefinite. App. Br. 11. On this record, we do not sustain the indefiniteness rejection of claim 1. Independent claims 10 and 19 recite similar limitations, and thus, we understand these claims to be rejected under the same rationale. So for the above-discussed reasons, we also do not sustain the Examiner's rejection of these claims. Nor do we sustain the rejection of the dependent claims for similar reasons. 8 8 Claim 8 recites, in part, "dividing the order size of the security trade order into two round lots." App. Br. 41. In the Advisory Action, the Examiner stated that "[r ]egarding the previous Â§ 112, 2nd paragraph, rejection pertaining to dividing the order size into two round lots, Examiner rescinds his rejection." Adv. Act. 4. Thus, we do not separately address claim 8. Also, the Examiner notes claim 5 's features, but the Examiner never 21 Appeal2018-001090 Application 11/181,956 B. Claim 27 Claim 27 recites, in part, "receiving an indication of a level of aggressiveness for executing the security trade order; and adjusting at least one of the minimum wait time or the maximum wait time based on the received level of aggressiveness." App. Br. 45. In rejecting claim 27, the Examiner offers multiple interpretations of this limitation: Interpretation # 1. The minimum wait time and the maximum wait time are defined by volatility, frequency and historical average trade time according to Claim 1. All three parameters are indications of aggressiveness. The minimum wait time and maximum wait time are inherently adjusted based upon the received level of aggressiveness. Claim 27 just rephrases a claim limitation in Claim 1. Interpretation #2. The minimum wait time and the maximum wait time are defined by volatility, frequency, historical average trade time and a predetermined factor according to Claim 1. After the minimum wait time and maximum wait time are established they are adjusted ( changed) based upon an indication of aggressiveness which is another separate and distinct indication of aggressiveness. For example, a limit order recites a limit price and a quantity. Both parameters are indications of aggressiveness, therefore the minimum wait time and the maximum wait time are adjusted based upon the limit order. Furthermore, a broad and reasonable interpretation of Claim 27 is that if the minimum wait time or maximum wait time are adjusted, the adjustment is the essential elimination of the minimum wait time (i.e. minimum wait time adjusted to zero) and maximum wait time (i.e. maximum wait time adjusted to affirmatively explains whether this is a separate basis for rejecting claim 5 as indefinite. Ans. 5; Final Act. 7. Nor is it apparent which limitation renders the claim indefinite because the Examiner discusses an issue of breadth, not whether the claim is unclear. See Ans. 5; Final Act. 7. 22 Appeal2018-001090 Application 11/181,956 infinity). Under such an interpretation, method steps contained in Claim 1 are not performed, contradicting Claim 1. Adv. Act. 4--5. As Appellants point out, the Examiner has not shown that volatility, frequency, and historical average trade time are related to aggressiveness in this way. App. Br. 32. Rather, claim 27 expressly recites "receiving" the level and "adjusting." Id. at 45. That is, the recited aggressiveness level is reflected in a received indication. The indication, in tum, is a basis for adjusting the wait time. Claim 27 is unambiguous in this regard. The Examiner's reasoning ignores the transitional language "comprising," which means that additional unrecited features fall within the scope of claim 1. These additional features may include adjustments to the wait times in claim 1. Claim 27, though, further limits claim 1 by reciting a specific adjustment based on the received indication. In sum, claim 1 does not exclude an adjustment to wait times, but claim 27 further requires a specific adjustment based on the received indication. Claim 1 's breadth in this way does not render claims 1 or 27 indefinite. For these reasons, we do not sustain the indefiniteness rejection of claim 27. III. THE OBVIOUSNESS REJECTION A. The Examiner's Findings In the Â§ 103 rejection, the Examiner finds that Cushing multiplies a historical average trade time by a factor to determine the recited wait times. Ans. 7 (citing Cushing 3:61--4:15). In particular, the Examiner finds that Cushing measures the historical average trade time as a percentage of average share volume traded. Id. 23 Appeal2018-001090 Application 11/181,956 B. Appellants ' Contentions Appellants argue that Cushing's multiplication does not determine the recited wait times. App. Br. 34--35. According to Appellants, Cushing multiplies an adjusted share volume percentage by the total shares in an order for other reasons. Id. C. Analysis Claim 1 recites, in part, "each of the minimum wait time and the maximum wait time is determined by multiplying a historical average trade time for the security by a respective predetermined factor." Id. at 40. We agree with Appellants that Cushing does not determine wait time in this way. Id. at 34--35. In particular, Cushing teaches an equity-trading strategy. Cushing 3 :26-4:24. The cited embodiment in Cushing relates to smoothing computed share volumes. Id. at 3:61---67. This smoothing eliminates the effect of anomalies during the analyzed time period----e.g., an unusually large daily volume. Id. at 3:61---65. The smoothed share volume, V*, is represented as: V*1BM, 9.30-10= /3ViBM, 9:30-10+(1-/3) Vs&Psoo,9:30-10 Id. at 4:1---6. Cushing's /Jis a constant having a value between O and 1. Id. The term V x 9 .30-10 is the percentage of the 21-day average share volume for security ( or index) X that occurs within the "9:30-10:00" time bin. Id. In step 205, Cushing multiplies the adjusted share volume percentage for each bin by the order's total shares. Id. at 4:7-9. As Appellants argue, Cushing's example lacks the historical trade time required by the recited wait-time determination. App. Br. 35. To be sure, Cushing's bins have start and end times, as the Examiner finds. 24 Appeal2018-001090 Application 11/181,956 Ans. 20. But the Examiner has not shown, for example, that Cushing determines the time bins (e.g., 9:30 and 10:00) using a historical average. Reply Br. 17. Rather, Cushing merely performs smoothing on the share volumes during the previously defined time periods. See Cushing 3:61---67. Thus, we do not sustain the rejection of claim 1. For similar reasons, we also do not sustain the rejection of claims 10 and 19, which recite similar limitations and are rejected under the same rationale, and the rejection of dependent claims 5, 6, 8, 9, 14, 15, 17, 18, 23, 24, and 26. See Final Act. 10; Ans. 8. CONCLUSIONS We sustain the rejection of claims 1, 5, 6, 8-10, 14, 15, 17-19, 23, 24, and 26-32 under 35 U.S.C. Â§ 101. We do not sustain the rejection of claims 1, 5, 6, 8-10, 14, 15, 17-19, 23, 24, and 26-30 under pre-AIA 35 U.S.C. Â§ 112, second paragraph, as being indefinite. We do not sustain the rejection of claims 1, 5, 6, 8-10, 14, 15, 17-19, 23, 24, and 26 under 35 U.S.C. Â§ 103(a). DECISION Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner's decision to reject claims 1, 5, 6, 8-10, 14, 15, 17-19, 23, 24, and 26-32 is affirmed. See 37 C.F.R. Â§ 4I.50(a)(l). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 25