Gregory Manning et al.

Patent Trials and Appeals Board

Jan 26, 2021

2020002966 (P.T.A.B. Jan. 26, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/403,722 04/12/2006 Gregory P. Manning 05-7139 9912
63710 7590 01/26/2021
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
HENRY, THOMAS HAYNES
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
01/26/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
lkorovich@cantor.com
mcatarino@cgolaw.com
patentdocketing@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY P. MANNING, JOSEPH C. NOVIELLO, and
HOWARD W. LUTNICK
Appeal 2020-002966
Application 11/403,722
Technology Center 3700
Before MICHELLE R. OSINSKI, WILLIAM A. CAPP, and
NATHAN A. ENGELS, Administrative Patent Judges.
ENGELS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 4, 5, 8–11, 14–20, 22–25, and 27–31.
See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as CFPH, LLC. Appeal
Br. 3.
Appeal 2020-002966
Application 11/403,722

2
CLAIMED SUBJECT MATTER
Claims 16 and 27 are independent claims and are reproduced below
with emphasis added:
16. A method comprising the steps of:
by computer of a computer-implemented electronic
market, providing a secondary market for buying and selling
contest entries of a multi-stage contest, the multi-stage contest
having a plurality of stages,
each stage causing a portion of a plurality of contest
entries that are eligible to win the multi-stage contest
before a stage to become ineligible to win the multi-stage
contest after the stage,
except for the last stage, the remaining eligible
entries proceeding to the next stage of the multi-stage
contest,
the multi-stage contest having at least one winning
contest entry from among the contest entries that remain
eligible after the last of the plurality of stages;
by computer of the computer-implemented electronic
market, as a result of completion of at least one of the plurality
of stages of the contest, the computer-implemented secondary
market providing marking as ineligible computer-maintained
records of for buying and selling of contest entries of the multi-
stage contest that become ineligible as a result of the stage;
for entries that remain eligible after the completed at least
one of the plurality of stage, offering computer-implemented
secondary market providing support for trading of
remaining-eligible entries after change in eligibility or value of
entries after the stage;
causing a portion of the eligible contest entries to become
ineligible to win the multi-stage contest at each of the plurality
of stages comprises performing a first type of selection process;
and
determining at least one winning contest entry from one or
more contest entries remaining eligible after the plurality of
stages comprises a second type of selection process different
from the first type of selection process.
Appeal 2020-002966
Application 11/403,722

3
27. A method comprising the steps of:
by computer of a computer-implemented electronic
market, selling a plurality of contest entries eligible to win a
multi-stage contest to a plurality of contestants, each contest
entry being defined at least by one or more distinct identifiers,
rules of the multi-stage contest providing that:
at each of a plurality of stages in the multi-stage
contest, one or more determinations are made regarding at
least one of the distinct identifiers defining at least a
portion of the contest entries, the one or more
determinations causing a portion of the eligible contest
entries that are eligible to win the multi-stage contest
before a stage to become ineligible to win the multi-stage
contest after the stage;
except for the last stage, the entries remaining
eligible after the stage proceeding to the next stage of the
multi-stage contest,
the multi-stage contest having at least one winning
contest entry from among the contest entries that remain
eligible after the last of the plurality of stages;
by computer of the computer-implemented electronic
market trading system, as a result of completion of at least one
of the plurality of stages of the contest, marking as ineligible
computer-maintained records of entries of the multi-stage
contest that become ineligible as a result of the stage;
for providing programmed support for a secondary
market for buying and selling entries of the multi-stage contest
that change value and eligibility as the stages of the contest
progress and that remain eligible after the completed at least one
of the plurality of stage, offering computer-implemented
secondary market and the electronic trading system, and
providing programmed support for trading of remaining-eligible
entries after change in eligibility or value of entries after the
stage;
determining an award for each of the at least one winning
contest entry based at least on the revenues received from selling
the plurality of contest entries;
determining at least one winning contest entry from one or
more contest entries remaining eligible after the plurality of
Appeal 2020-002966
Application 11/403,722

4
stages comprises providing a competition between contestants
associated with the one or more contest entries that remain
eligible after the plurality of stages to determine at least one
winning contest entry.
REJECTION
Claims 4, 5, 8–11, 14–20, 22–25, and 27–31 are rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 2.
Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis
4, 5, 8–11, 14–20, 22–
25, 27–31
101 Eligibility
OPINION
Appellant contends the Examiner failed to follow proper procedures
in rejecting the pending claims as being directed to non-statutory subject
matter. Appeal Br. 6. In particular, Appellant contends the Examiner failed
to make a prima facie showing that the claims are directed to an abstract
idea because the Final Office Action cites only CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011). Id. According to
Appellant, CyberSource dealt with claims directed to detecting credit card
fraud which is unlike the present claims, which Appellant describes as
“include[ing] elements such as entries into a multi-stage contest, markings of
ineligibility and a secondary market for buying and selling.” Id. Appellant
also contends the Final Office Action fails to include both a limitation-by-
limitation analysis and a claims-as-a-whole analysis. Id. at 6–7. Further,
Appellant argues that “[a] proper consideration of the claims would identify
that the claims present a nonconventional arrangement that is significantly
more than an abstract idea.” Id. at 8.
Appeal 2020-002966
Application 11/403,722

5
We disagree with Appellant. The Supreme Court’s two-step
framework guides our analysis of patent eligibility under 35 U.S.C. § 101.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). In addition, the
Office has published revised guidance for evaluating subject matter
eligibility under 35 U.S.C. § 101, specifically with respect to applying the
Alice framework. USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Office Guidance”).2
If a claim falls within one of the statutory categories of patent
eligibility (i.e., a process, machine, manufacture, or composition of matter)
then the first inquiry is whether the claim is directed to one of the judicially
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must “look
at the ‘focus of the claimed advance over the prior art’ to determine if the
claim’s ‘character as a whole’ is directed to excluded subject matter.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257–58 (Fed.
Cir. 2016). Per the Office Guidance, this first inquiry (“Step 2A”) has two
prongs of analysis: (i) does the claim recite (i.e., set forth or describe) a
judicial exception (e.g., an abstract idea such as a mental process), and (ii) if
so, is the judicial exception integrated into a practical application. Office
Guidance, 84 Fed. Reg. at 54; see also MPEP § 2106.04(II)(A). Under the
Office Guidance, if the judicial exception is integrated into a practical
application, see infra, the claim is patent eligible under § 101. Office

2 The Office Guidance, as well as guidance set forth in the Berkheimer
Memorandum, have been incorporated into the latest revision of the Manual
of Patent Examination Procedure (“MPEP”) §§ 2103–2106.07(c) (9th ed.,
Rev. 10.2019, June 2020).
Appeal 2020-002966
Application 11/403,722

6
Guidance, 84 Fed. Reg. at 54–55; see also MPEP § 2106.04(d). If the claim
is directed to a judicial exception (i.e., recites a judicial exception and does
not integrate the exception into a practical application), the next step
(“Step 2B”) is to determine whether any element, or combination of
elements, amounts to significantly more than the judicial exception.
Alice, 573 U.S. at 217; Office Guidance, 84 Fed. Reg. at 56; see also MPEP
§ 2106.05.
Here, we conclude Appellant’s claims recite an abstract idea,
specifically, a fundamental economic principle. More specifically,
Appellant’s claims generally describe providing a multi-stage contest and
providing a secondary market for contest entries. This is consistent with the
Examiner’s characterization of the claims as a whole (Final Act. 2; Ans. 3)3
and with Appellant’s characterization of the claims (Appeal Br. 6; accord,
e.g., Spec. 3–4, 6–8).
The italics added to claims 16 and 27 above highlight the recited
concepts of providing a multi-stage contest and a secondary market for
contest entries. In particular, claim 16 recites “providing a secondary market
for buying and selling contest entries of a multi-stage contest,” performing a

3 To any extent we describe the abstract idea slightly differently than the
Examiner, the Examiner’s characterization of the idea is not erroneous. “An
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). The
level of abstraction an examiner uses to describe an abstract idea need not
“impact the patentability analysis.” Apple, 842 F.3d at 1241. That is true
here. Regardless of the level of generality used to describe the abstract idea
recited, the claims are directed to an abstract idea. Cf. Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344–45 (Fed.
Cir. 2013) (“Although not as broad as the district court’s abstract idea of
organizing data, it is nonetheless an abstract concept.”).
Appeal 2020-002966
Application 11/403,722

7
first type of selection process causing a portion of entries to become
ineligible to win the contest at each stage, electronically marking entries as
ineligible, “offering computer-implemented secondary market providing
support for trading of remaining-eligible entries after change in eligibility or
value of entries,” and “determining at least one winning contest entry” with
a second type of selection process. Similarly, claim 27 recites “selling a
plurality of contest entries,” causing a portion of entries to become ineligible
at each of a plurality of stages, marking as ineligible computer-maintained
records of entries, “providing programmed support for a secondary market
for buying and selling entries,” “offering computer-implemented secondary
market and the electronic trading system,” “providing programmed support
for trading of remaining-eligible entries,” determining an award, and
“determining at least one winning contest entry” by providing a competition
between contestants.
Consistent with the Office Guidance and case law, we conclude that
the claimed concept of providing a multi-stage contest and a secondary
market for contest entries recites a fundamental economic principle—i.e.,
one of the certain methods of organizing human activity set forth in the
Office Guidance—and, thus, an abstract idea. See MPEP
§ 2106.04(a)(2)(II)(B); see also In re Marco Guldenaar Holding B.V., 911
F.3d 1157, 1160–61 (Fed. Cir. 2018) (determining claims directed to a
method of playing a dice game and wagering on the game were drawn to an
abstract idea); In re Smith, 815 F.3d 816, 818–19 (Fed. Cir. 2016)
(describing a new set of rules for conducting a wagering game as a
fundamental economic practice); OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1364 (Fed. Cir. 2015) (determining a new method of price
Appeal 2020-002966
Application 11/403,722

8
optimization was a fundamental economic concept); Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367–68 (Fed. Cir. 2015)
(concluding that tracking financial transactions to determine whether they
exceed a pre-set spending limit was “not meaningfully different” from other
ideas found to be abstract involving certain methods of organizing human
activity); Planet Bingo, LLC v. VKGS LLC, 576 F. App’x 1005, 1007 (Fed.
Cir. 2014) (determining that claims directed to managing a game of bingo to
recite a method of organizing human activity and thus an abstract idea)
(unpublished).
Because we agree with the Examiner that each of claims 16 and 27
recites an abstract idea, we next determine whether the claims integrate the
judicial exception into a practical application. Office Guidance, 84 Fed.
Reg. at 54; see also MPEP § 2106.04(d). To determine whether the judicial
exception is integrated into a practical application, we identify whether there
are “any additional elements recited in the claim beyond the judicial
exception(s)” and evaluate those elements to determine whether they
integrate the judicial exception into a recognized practical application.
Office Guidance, 84 Fed. Reg. at 54–55; see also MPEP § 2106.05(a)–(c),
(e)–(h).
Here, we find the additional limitations do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular
machine” to apply or use the judicial exception (see MPEP § 2106.05(b));
(iii) a particular transformation of an article to a different thing or state
Appeal 2020-002966
Application 11/403,722

9
(see MPEP § 2106.05(c)); or (iv) any other meaningful limitation
(see MPEP § 2106.05(e)). See Office Guidance, 84 Fed. Reg. at 55.
Rather, the additional elements recite, inter alia, that the abstract idea
is performed by a generically recited computer. See Final Act. 3; Ans. 4.
Contrary to Appellant’s argument that the claims “present a nonconventional
arrangement that is significantly more than an abstract idea” (Appeal Br. 8),
the limitations describing the multi-stage contest and secondary market for
contest entries do not impart patent eligibility but instead merely recite using
a generic computer to implement rules for the multi-stage contest and the
secondary market for contest entries. Appellant does not cite, and we do not
find, anything in claim 16 or claim 27 or in Appellant’s Specification that
amounts to a technological improvement. For at least these reasons, claims
16 and 27 do not integrate the judicial exception into a practical application.
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
(i.e., step 2B of the Office Guidance) to determine if there are additional
limitations that individually, or as an ordered combination, ensure the claims
amount to “significantly more” than the abstract idea. Alice, 573 U.S.
at 217–18 (citing Mayo, 566 U.S. at 77–79). As stated in the Office
Guidance, many of the considerations to determine whether the claims
amount to “significantly more” under step two of the Alice framework are
already considered as part of determining whether the judicial exception has
been integrated into a practical application. Office Guidance, 84 Fed. Reg.
at 56; see also MPEP § 2106.04(d)(I). Thus, at this point of our analysis, we
determine if the claims add a specific limitation, or combination of
limitations, that is not well-understood, routine, conventional activity in the
Appeal 2020-002966
Application 11/403,722

10
field, or simply append well-understood, routine, conventional activities at a
high level of generality. Office Guidance, 84 Fed. Reg. at 56; MPEP
§ 2106.05(II).
Here, Appellant’s claims do not recite specific limitations (alone or
when considered as an ordered combination) that are not well-understood,
routine, and conventional. “[T]he invocation of ‘already-available
computers that are not themselves plausibly asserted to be an advance . . .
amounts to a recitation of what is well-understood, routine, and
conventional.’” Customedia Techs., LLC v. Dish Network Corp., 951
F.3d 1359, 1363 (Fed. Cir. 2020) (quoting SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018) (distinguishing cases in which
claims were found to recite patent-eligible improvements to computer
functionality); see Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306,
1335 (Fed. Cir. 2015) (explaining that in order for a machine to add
significantly more, it must “play a significant part in permitting the claimed
method to be performed, rather than function solely as an obvious
mechanism for permitting a solution to be achieved more quickly”); see also
MPEP § 2106.05(b). Each of Appellant’s independent and dependent claims
generically recites a computer and functions performed by the computer
and/or a human (e.g., selling a contest entries, determining some entries are
ineligible at a plurality of stages, providing a secondary market for eligible
entries, determining an award, and determining at least one winning entry).
Appellant makes no meaningful argument to the contrary.
Moreover, to the extent that Appellant is relying upon claim elements
that are part of the identified abstract idea, as addressed above, Appellant
does not rely upon “additional elements” in attempting to establish
Appeal 2020-002966
Application 11/403,722

11
significantly more than the identified abstract idea. “It has been clear since
Alice that a claimed invention’s use of the ineligible concept to which it is
directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.” BSG Tech LLC v.
BuySeasons, Inc., 889 F.3d 1281, 1290 (Fed. Cir. 2018). See also Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (citing
Mayo, 566 U.S. at 90) (a finding that the claims are novel and nonobvious in
light of an absence of evidence does not conflict with the Examiner’s
conclusion under 35 U.S.C. § 101 because “a claim for a new abstract idea is
still an abstract idea”); Trading Techs. Int’l v. IBG LLC, 921 F.3d at 1093
(“The abstract idea itself cannot supply the inventive concept, ‘no matter
how groundbreaking the advance.”’) (quoting SAP, 898 F.3d at 1171).
Accordingly, having considered the Examiner’s rejection in light of
each of Appellant’s arguments, we find no error in the Examiner’s rejection
of independent claims 16 and 27. Appellant does not separately address any
dependent claims, and we find no error in the Examiner’s rejection of
dependent claims 4, 5, 8–11, 14, 15, 17–20, 22–25, and 28–31 for the same
reasons discussed above.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
4, 5, 8–11,
14–20, 22–
25, 27–31
101 Eligibility 4, 5, 8–11,
14–20, 22–
25, 27–31

Appeal 2020-002966
Application 11/403,722

12

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED