INTEGRAL DEVELOPMENT CORP.

Patent Trials and Appeals Board

Jul 2, 2020

14637247 - (D) (P.T.A.B. Jul. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/637,247 03/03/2015 Michelle Yip CHEN INDE/0012USP1 5427
107456 7590 07/02/2020
Artegis Law Group, LLP
John Carey
7710 Cherry Park Drive Suite T #104
Houston, TX 77095
EXAMINER
SHAIKH, MOHAMMAD Z
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
07/02/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
jmatthews@artegislaw.com
kcruz@artegislaw.com
sjohnson@artegislaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHELLE YIP CHEN, VIKAS SRIVASTAVA and
MICHAEL TESTA
___________

Appeal 2020-001525
Application 14/637,247
Technology Center 3600
____________

Before JEAN R. HOMERE, CARL W. WHITEHEAD JR. and
MICHAEL J. ENGLE, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Appellant2 is appealing the final rejection of claims 1–3 and 5–8
under 35 U.S.C. § 134(a). See Appeal Brief 5. Claim 1 is independent.

1 Rather than reiterate Appellant’s arguments and the Examiner’s
determinations, we refer to the Appeal Brief (filed August 28, 2019), the
Reply Brief (filed December 22, 2019), the Final Action (mailed February
28, 2019) and the Answer (mailed October 22, 2019), for the respective
details.

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies INTEGRAL DEVELOPMENT
CORPORATION, a corporation of the State of Delaware, as the real party in
interest. Appeal Brief 3.
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2

Claim 4 is cancelled. See Claim Appendix. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Introduction
According to Appellant, the claimed subject matter is directed to:
[A] trade netting module, when executed by the processor, is
configured to generate, at a first point in time, a first netting plan
that is designed to offset at least one trade included in the one or
more trades organized by currency pairs against at least one other
trade included in the one or more trades organized by currency
pairs. The trade netting module, when executed by the processor,
is further configured to estimate, for the first netting plan, a first
value that is proportional to an expected savings based on real-
time market data and associated with executing the portfolio of
trades according to the netting plan versus executing the portfolio
of trades without the netting plan, where the first value is not
exceeded by a cost of trading that is proportional to a change in
market value of the portfolio of trades between the first point in
time and a time that a first trade included in the portfolio of trades
is executed.
Specification ¶ 8.
Claim 1 is reproduced below for reference (bracketed step lettering
added):
Representative Claim3
1. A computing device, comprising:
[a] a processor; and

3 Appellant argues claims 1–3 and 5–8 as a group, focusing on subject
matter common to independent claim 1. See Appeal Brief 10. We select
independent claim 1 as the representative claim. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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[b] a memory that includes a reception module, a trade organization
module, a trade netting module, and a trade execution module,
wherein, when executed by the processor:
[c] the reception module is configured to receive trade
information
[c1]describing two or more trades included in a portfolio
of trades that is to be executed, wherein the two or more
trades include:
a first trade expressed in a base currency of a first
currency pair, and
a second trade expressed in a term currency of the first
currency pair;
[d] the trade organization module is configured to organize the two
or more trades included in the portfolio of trades as one or more
currency pairs;
[e] the trade netting module is configured to:
[e1] for at least one of the first trade or the second trade,
estimate a non-provided trade amount not included in the
trade information and based on a mid-market rate,
[f] generate, at a first point in time, a first netting plan that
includes:
[f1] a netted amount comprising an amount that is netted
among the two or more trades included in the
portfolio of trades, wherein the netted amount is
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based on the trade information and the non-
provided trade amount,
and
[f2] a market amount comprising an amount remaining
for one or more trades in the portfolio of trades
after the netted amount is executed, and
[g] estimate, for the first netting plan, a first transaction cost
that is based on real-time market data and is associated
with executing the portfolio of trades according to the
netting plan versus executing the portfolio of trades
without the netting plan; and
[h] the trade execution module is configured to:
[h1] execute, as a market trade, a first trade associated with the
[ ] market amount and the first netting plan,
wherein the first trade is not included in the netted
amount,
and
[h2] further wherein the first transaction cost is not
exceeded by a market transaction cost associated
with a first error term comprising a change in the
market amount between the first point in time and
a time that the first trade is executed.

Rejection on Appeal
Claims 1–3 and 5–8 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Action 19–23.
PRINCIPLES OF LAW
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A. Section 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.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (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 waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
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252, 267–68 (1853))); 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
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 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. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second part
of the Alice and Mayo framework, where “we must examine the elements of
the claim to determine whether it contains an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(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.
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B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019)
(“2019 Revised Guidance”).4 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5
2019 Revised Guidance at 52–55.

4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance at 54–55.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is 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.
2019 Revised Guidance at 52–56.
ANALYSIS
The Examiner determines claims 1–3 and 5–8 are patent ineligible
under 35 U.S.C. § 101. See Final Action 20–21 (“covers performance of the
limitation(s) as a certain method of organizing human activity, a
fundamental economic practice of steps for netting foreign exchange
currency transactions”); see Alice, 573 U.S. at 217 (describing the two–step
framework “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts”).
We are not persuaded the Examiner’s rejection is in error. Unless
otherwise indicated, we adopt the Examiner’s findings and conclusions as
our own. We add the following primarily for emphasis and clarification
with respect to the Revised Guidance.

Step 2A–Prongs 1 and 2 identified in the 2019 Revised Guidance
Prong One
Appellant argues:
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According to the 2019 Guidance, for a claim to be an abstract
idea, the claim must recite limitations that fall within the subject
matter groupings of at least one of: mathematical concepts,
certain methods of organizing human activity, and processes.
See 2019 Guidance, 84 Fed. Reg. at 52, 54. Appellant submits
that the present claims do not recite any limitations falling within
any of these groupings.
Appeal Brief 10.
The Specification discloses in regard to the related art:
A computer system associated with a foreign exchange could
receive such a portfolio of trades and could provide a quote for
each proposed trade in the portfolio. After a trader approves each
quote in the portfolio, the exchange system could execute the
corresponding trade. Once all trades are executed, the proceeds
from each trade could be transferred to the corresponding
account.
Specification ¶ 4.
The Specification further discloses, “One drawback of the above
approach is that each trade is executed at market rate and has an associated
transaction cost” and “even if one trade in the portfolio could have been
offset with another trade in the same portfolio, each trade is executed
separately at the market rate and, consequently, incurs a separate transaction
cost.” Specification ¶ 5.
In an effort to reduce the transaction costs associated with such
portfolio of trades, some approaches attempt to analyze a given
portfolio for potential offsetting trades, estimate how those
offsetting trades are valued based on currently available market
data, and then attempt to offset trades where possible. Any
remaining trades that cannot be internally offset are executed
individually at market rates, as described above. Finally, all
residual trades are executed to account for any differences in
market rates arising between the time the estimates for the
offsetting trades are calculated and the time that the market trades
are executed. This difference is referred to herein as an “error
term.”
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Specification ¶ 5.
“One major drawback of such efforts is that market rates can change
significantly between the time the offsetting trades are estimated and the
time the market trades are executed” and “[s]uch market rate changes can
cause large error terms, resulting in relatively large residual trades that
reduce the advantages of internally offsetting trades in the first instance.”
Specification ¶ 6.
Further, the transaction costs associated with the residual trades
typically increase as the error terms increase, thereby adding
more cost to the efforts to reduce transaction costs described
above. Further a large market movement is more likely to occur
during a more time-intensive manual calculation, which could
result in the realized transaction cost being multiples of the
original estimates.
Specification ¶ 6 (emphasis added).
The claimed invention estimates:
for the first netting plan, a first value that is proportional to an
expected savings based on real-time market data and associated
with executing the portfolio of trades according to the netting
plan versus executing the portfolio of trades without the netting
plan, where the first value is not exceeded by a cost of trading
that is proportional to a change in market value of the portfolio
of trades between the first point in time and a time that a first
trade included in the portfolio of trades is executed.
Specification ¶ 8 (emphasis added).
Claim 1 recites receiving trade information for first and second trades
wherein the first trade is expressed in a base currency of a first currency pair
and the second trade is expressed in a term currency of the first currency pair
in limitations [c]–[c1]. Claim 1 further recites organizing the trades,
estimating a trade amount for at least one of the trades and generating a
netted amount based upon trade information and a non-provided trade
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amount in limitations [d]–[f2]. Claim 1 also recites estimating a first
transaction cost associated with executing the portfolio of trades without the
netting pan, executing a first trade associated with the market amount and
the first netting plan wherein the transaction cost is not exceeded by a
market transaction cost associated with a first error term in limitations [g]–
[h2].
These steps comprise fundamental economic principles or practices
(including hedging, insurance, mitigating risk); thus, the claim recites the
abstract idea of “certain methods of organizing human activity.” See 2019
Revised Guidance, Section I (Groupings of Abstract Ideas). Our reviewing
court has found claims to be directed to abstract ideas when they recited
similar subject matter. See Alice, 573 U.S. at 219–20 (concluding that use of
a third party to mediate settlement risk is a “fundamental economic practice”
and thus an abstract idea); id. (describing the concept of risk hedging
identified as an abstract idea in Bilski as “a method of organizing human
activity”); Bilski, 561 U.S. at 611–612 (concluding that hedging is a
“fundamental economic practice” and therefore an abstract idea); Bancorp
Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1280 (Fed.
Cir. 2012) (concluding that “managing a stable value protected life insurance
policy by performing calculations and manipulating the results” is an
abstract idea); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378–79 (Fed. Cir. 2017) (holding that concept of “local processing of
payments for remotely purchased goods” is a “fundamental economic
practice, which Alice made clear is, without more, outside the patent
system.”). Therefore, we conclude the claims recite an abstract idea
pursuant to Step 2A, Prong One of the 2019 Revised Guidance. See 2019
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Revised Guidance, Section III(A)(1) (Prong One: Evaluate Whether the
Claim Recites a Judicial Exception).
Prong Two
Under Prong Two of the 2019 Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception into a
practical application of the exception.” 2019 Revised Guidance, Section
III(A)(2). It is noted that a “claim that integrates a judicial exception into a
practical application will apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception.” 2019 Revised Guidance, Section III(A)(2).
We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
guidance). See 2019 Revised Guidance at 55 nn.25, 27–32.
Appellant contends, “the trade netting module of the claimed
approach is able to generate a specific netting plan for a large number of
user-selected trades based on both user provided trade information and non-
provided trade information” and therefore the claimed system “provides a
practical application of executing trades for an entire portfolio even when
the user provided information is incomplete.” Appeal Brief 12 (citing
Specification ¶¶ 87–96; Figures 4, 5). Appellant argues, “in compliance
with Data Engine and Core Wireless, the claimed approach improves the
functioning or operation of a computer.” Appeal Brief 13 (citing “Data
Engine Techs. LLC v. Google LLC, No. 2017-1135, 13–16 (Fed. Cir., Oct.
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9, 2015); Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880
F.3d 1356, 1363 (Fed. Cir. 2018)”).
Appellant relies upon 10 paragraphs from the Specification to support
the assertion that the claimed system “provides a practical application of
executing trades for an entire portfolio even when the user provided
information is incomplete” without any specificity to the location of the
support within the 10 paragraphs. See Appeal Brief 12. We do not find
Appellant’s arguments persuasive because it is not clear how providing
complete user provided information integrates the recited claimed abstract
idea into a practical application. See 2019 Revised Guidance at 54, 55.
Further, we do not find Appellant’s arguments persuasive because any
alleged improvement to the efficiency, speed, and accuracy, arise out of the
conventional advantages of using the claimed computing system as a tool,
and not a particular improvement to the computing device itself (see
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (“[M]erely adding computer functionality to increase
the speed or efficiency of the process does not confer patent eligibility on an
otherwise abstract idea”)); see 2019 Revised Guidance at 55; see also
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1090 (Fed. Cir. 2019)
(“This invention makes the trader faster and more efficient, not the
computer. This is not a technical solution to a technical problem.”). Claim
1’s method does not recite any improvement to the claimed computing
system, instead the method only uses the computing system to calculate
efficient trade offsets. See Specification ¶ 8.
In Core Wireless, the court held that claims which recited an interface
were patent eligible because the claims recited specific limitations of the
interface such as: an application summary that can be reached through a
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menu, the data being in a list and being selectable to launch an application,
and additional limitations directed to the actual user interface displayed and
how it functions. Core Wireless, 880 F.3d at 1363. The court found that the
claims were directed to an improved user interface and not the abstract
concept of an index as the claim “limitations disclose a specific manner of
displaying a limited set of information to the user, rather than using
conventional user interface methods to display a generic index on a
computer.” Core Wireless, 880 F.3d at 1363; see also Trading Techs. Int’l,
Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017) (Holding that a user
interface with a prescribed functionality directly related to the interface’s
structure, that is addressed to and resolves a problem in the art, is patent
eligible.).
Further, in Data Engine Technologies, the court held:
When considered as a whole, and in light of the
specification, representative claim 12 of the ’259 patent is not
directed to an abstract idea. Rather, the claim is directed to a
specific method for navigating through three-dimensional
electronic spreadsheets. The method provides a specific solution
to then-existing technological problems in computers and prior
art electronic spreadsheets.
Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1007–08 (Fed. Cir.
2018).
Accordingly, we do not find Appellant’s arguments persuasive
because calculating efficient trade offsets is unlike patent-eligible claims
directed to particular technical ways of displaying data such as the claimed
user interface in Core Wireless and the claimed accessibility of electronic
spreadsheets in Data Engine Techs because the claimed trade offsets do not
improve the functioning of the processor. See 2019 Revised Guidance at 55.
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Appellant contends, “Because the present claims are directed towards
a particular approach for analyzing and executing a plurality of trades,
Appellant submits that the present claims cannot be properly interpreted as
preempting all applications or uses of an abstract idea.” Appeal Brief 16.
We do not find Appellant’s reasoning persuasive because as the Supreme
Court has described “the concern that drives this exclusionary principle [i.e.,
the exclusion of abstract ideas from patent eligible subject matter] as one of
pre-emption.” Alice, 573 U.S. at 216. However, characterizing preemption
as a driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. As our reviewing court has
explained, “[t]he Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability,” and
“[f]or this reason, questions on preemption are inherent in and resolved by
the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) (citing Alice, 573 U.S. at 216). And, although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Id.
Moreover, “[w]here a patent’s claims are deemed only to disclose patent
ineligible subject matter under the [Alice/Mayo] framework . . . , preemption
concerns are fully addressed and made moot.” Id.; see also OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”).
Additionally, we detect no additional element (or combination of
elements) recited in Appellant’s representative claim 1 that integrates the
judicial exception into a practical application. See 2019 Revised Guidance,
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Section III(A)(2). For example, Appellant’s claimed additional elements
(e.g., memory with various modules, processor): (1) do not improve the
functioning of a computer or other technology; (2) are not applied with any
particular machine (except for a generic computer device); (3) do not effect
a transformation of a particular article to a different state; and (4) are not
applied in any meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment, such that the
claim as a whole is more than a drafting effort designed to monopolize the
exception. See MPEP § 2106.05(a)–(c), (e)–(h).
Accordingly, we determine the claim does not integrate the recited
judicial exception into a practical application. See 2019 Revised Guidance,
Section III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception,
Evaluate Whether the Judicial Exception Is Integrated Into a Practical
Application).

Step 2B identified in the 2019 Revised Guidance
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 217–18 (quoting Mayo,
566 U.S. at 72–73).
Appellant argues, “The Examiner has not made any rejections under
35 U.S.C. §§ 102 and 103 based on these particular limitations, which
indicates that the above limitations are unconventional and non-routine. See
Final Office Action at p. 2.” Reply Brief 7. We do not find Appellant’s
argument persuasive because as the Federal Circuit has explained, a “claim
for a new abstract idea is still an abstract idea.” Synopsis, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). Even assuming the
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technique claimed was “[g]roundbreaking, innovative, or even brilliant,” that
would not be enough for the claimed abstract idea to be patent eligible. See
Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591
(2013).
Appellant also argues:
[T]he limitations of the present claims are specific to
implementing the inventive functionality of the claimed
approach and, therefore, cannot be considered conventional or
routine. On this point, the Examiner has not cited any evidence
that these particular limitations are well-known, conventional, or
routine operations. See Memorandum - Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)
(April 19, 2018). Accordingly, the specific limitations cited in
the present claims are different from, and provide advantages
over, previous well-understood, routine and conventional
devices employed in the field of computer trading platforms.
Appeal Brief 15.
The 2019 Revised Guidance states:
In accordance with existing guidance, an examiner’s
conclusion that an additional element (or combination of
elements) is well understood, routine, conventional activity must
be supported with a factual determination. For more information
concerning evaluation of well-understood, routine, conventional
activity, see MPEP 2106.05(d), as modified by the USPTO
Berkheimer[6] Memorandum.[7]

6 Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018).

7 USPTO Memorandum, Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) (Apr. 19, 2018) (“Berkheimer Memorandum”),
available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.

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2019 Revised Guidance, 84 Fed. Reg. 56 n.36 (Section III(B)) (emphasis
added).
The Berkheimer Memorandum Section III(A) states when formulating
rejections, “[i]n a step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds, and expressly supports a rejection in writing.” Berkheimer
Memorandum at 3. The Berkheimer Memorandum provides four criteria for
the Examiner to utilize to provide support for the additional elements to be
considered to be well-understood, routine or conventional.8
The Examiner determines, “The MPEP provides support that the
additional limitations in the claim are directed to well-understood routine
and conventional steps,” in particular limitations that “are claimed in a
merely generic manner” (e.g., “Storing and retrieving information in
memory”); “insignificant extra-solution activity”; and “[m]ere instructions to
implement an abstract idea, or with the use of generic computer
components.” Answer 16–17 (citing MPEP § 2106.05(d)). Further, the
Examiner correctly notes that many of the limitations identified by
Appellant are part of the abstract idea, not additional elements beyond the

8 Berkheimer Memorandum at 3–4 (Section III(A)) (“1. A citation to an
express statement in the specification or to a statement made by an applicant
during prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s) . . . . 2. A citation to one or
more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting
the well-understood, routine, conventional nature of the additional
element(s). . . . 3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional element(s) . . . .
4. A statement that the examiner is taking official notice of the well-
understood, routine, conventional nature of the additional element(s).”).

Appeal 2020-001525
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19

abstract idea. Answer 15–16; see also BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) (“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.”). Accordingly, we do not find
Appellant’s argument persuasive because, in determining if the additional
elements (or combination of additional elements) represent well-understood,
routine, conventional activity, the Examiner supported the determination
based upon a factual determination as specified in the Berkheimer
Memorandum. See Berkheimer Memorandum at 3–4 (Section III(A)(2)).
Further, we note in BASCOM9, our reviewing court found that while
the claims of the patent were directed to an abstract idea, the patentee
alleged an “inventive concept can be found in the ordered combination of
the claim limitations that transform the abstract idea of filtering content into
a particular, practical application of that abstract idea.” BASCOM, 827 F.3d
at 1352. In particular, the patent in BASCOM claimed “a technology-based
solution (not an abstract-idea-based solution implemented with generic
technical components in a conventional way) to filter content on the Internet
that overcomes existing problems with other Internet filtering systems.”
BASCOM, 827 F.3d at 1351. Claim 1 is distinguishable, as it recites an
abstract-idea-based solution, that is, a method of calculating trade offsets in
an efficient manner. See generally Specification. Therefore, we are not
persuaded that the ordered combinations of steps in representative claim 1
provide an inventive concept. See 2019 Revised Guidance at 56. We find

9 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016).
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Application 14/637,247
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the claims do not include a specific limitation or a combination of elements
that amounts to significantly more than the judicial exception itself. See
Memorandum, Section III(B) (Step 2B: If the Claim Is Directed to a
Judicial Exception, Evaluate Whether the Claim Provides an Inventive
Concept).
Accordingly, we conclude claims 1–3 and 5–8 are directed to
fundamental economic principles or practices (including hedging, insurance,
mitigating risk); thus, the claim recites the abstract idea of “certain methods
of organizing human activity” identified in the 2019 Revised Guidance and
thus, an abstract idea failing to recite limitations that amount to significantly
more than the abstract idea itself. We sustain the Examiner’s § 101 rejection
of claims 1–3 and 5–8.

CONCLUSION

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–3, 5–8 101 Eligibility 1–3, 5–8

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). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED