Justin AMOS

Patent Trials and Appeals Board

Jun 30, 2021

2021000984 (P.T.A.B. Jun. 30, 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.
13/279,628 10/24/2011 Justin Philip AMOS P-76509-US 3467
49443 7590 06/30/2021
Pearl Cohen Zedek Latzer Baratz LLP
7 Times Square, 19th Floor
New York, NY 10036
EXAMINER
PUTTAIAH, ASHA
ART UNIT PAPER NUMBER
3699
NOTIFICATION DATE DELIVERY MODE
06/30/2021 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):
Arch-USPTO@PearlCohen.com
USPTO@PearlCohen.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JUSTIN PHILIP AMOS
____________

Appeal 2021-000984
Application 13/279,628
Technology Center 3600
____________

Before BIBHU R. MOHANTY, JAMES P. CALVE, and
BRUCE T. WIEDER, Administrative Patent Judges.

MOHANTY, 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 1–5, 8–10, 13–17, and 19. We have
jurisdiction under 35 U.S.C. § 6(b). Oral arguments were presented on June
24, 2021.
SUMMARY OF THE DECISION
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Fortent Ltd.
(Appeal Br. 1).
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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to detecting insider trading
of financial instruments (Spec. 1, para. 6). Claim 1, reproduced below with
the italics added, is representative of the subject matter on appeal.

1. A method comprising:
receiving from a sentiment index, by a processor of an
alert system for insider trading, news event data that include a
news event, a time stamp associated with the news event and at
least one associated rating of a relationship between the news
event and a financial instrument which is traded on a market,
wherein the at least one associated rating includes at least one
of an impact rating and a relevance rating, wherein the news
event is a news story related to the financial instrument,
wherein the impact rating indicates a likelihood that the news
event will influence volatility of the financial instrument, and
wherein the relevance rating indicates how strongly related to
the news event the financial instrument is;
filtering, by the processor, the news event based on the at
least one associated rating by checking that the at least one
associated rating meets criteria;
identifying, by the processor, a plurality of orders for the
financial instrument present in a time period before the time
stamp of the news event;
identifying, by the processor, an order for the financial
instrument from the plurality of orders as being potential
insider trading if a price position of the order differs by at least
a variance threshold from a characteristic of the market after
the news event;
generating, by the processor, an alert for the order
identified as being potential insider trading;
updating, by the processor, the variance threshold
automatically according to an observed frequency of
identification of orders as being potential insider trading and
according to a volatility indicator of the financial instrument;
and
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displaying, by the processor, the alert at a display system,
the alert at least the associated rating.

THE REJECTION
The following rejection is before us for review:
Claims 1–5, 8–10, 13–17, and 19 are rejected under 35 U.S.C. § 101
as being directed to non-statutory subject matter.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (Appeal Br. 5–8; Reply Br. 1–2).
The Appellant argues further that the claim is “integrated into a practical
application” (Appeal Br. 8–11; Reply Br. 2–3). The Appellant argues
further that the claim is “significantly more” than the alleged abstract idea
(Appeal Br. 11–12; Reply Br. 3–4).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 5–10; Ans. 3–7).
We agree with the Examiner. An invention is patent eligible if it
claims a “new and useful process, machine, manufacture, or composition of

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice,
573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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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. (internal 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.”).
In January 2019, the USPTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] 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.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
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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 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.
See Guidance, 84 Fed. Reg. at 52–56.
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation 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.
The Specification at paragraph 6 states that the invention generally
relates to detecting insider trading of financial instruments. Here, the
Examiner has determined that the claim sets forth a method of detecting
insider trading of financial instruments and is an abstract concept in being a
method of organizing human activities in a commercial or legal interaction
(Ans. 6). We substantially agree with the Examiner. We determine that the
claim sets forth the subject matter in italics above which describes the
concept of using data to determine potential cases of insider trading in
financial markets which is a certain method of organizing human activities
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in being a fundamental economic practice, or a mental process, i.e., a
judicial exception. In FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d
1089, 1094 (Fed. Cir. 2016), it was held that claims directed to collecting
and analyzing information to detect misuse and notifying a user when
misuse is detected was directed to an abstract idea. See Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), collecting
information, analyzing it, and displaying certain results of the collection and
analysis was held to be an abstract idea. In Chicago Board of Options
Exchange v. International Securities Exchange, 640 F. App’x 986 (Mem)
(Fed. Cir. 2016), the Federal Circuit affirmed the determination in three
cases (CBM2013-00049, CBM2013-00050, CBM2013-00051) involving
trading technologies that were held to not meet the requirements of 35
U.S.C. § 101. In Trading Tech. Int’l v. IBG, LLC, 921 F.3d 1084, 1089,
1092 (Fed. Cir. 2019), it was held that claims directed to a financial trading
method used by a computer were not patent eligible.
We next determine whether the claim recites additional elements that
integrate the judicial exception into a practical application. See Guidance,
84 Fed. Reg. at 54–55. The Guidance references the MANUAL OF PATENT
EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Here, the claims do not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in the
claims imposes a meaningful limit on the judicial exception, such that the
claims are more than a drafting effort to monopolize the judicial exception.
For example, in the claim, the additional elements beyond the abstract
idea are the recited “processor” and “display system.” The claimed
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limitations of “receiving,” “filtering,” “identifying,” “generating,”
“updating,” and “displaying” as recited in the claim do not purport to
improve the functioning of these computer components themselves, do not
improve the technology of the technical field, and do not require a
“particular machine.” Rather, they are performed using generic computer
components. Further, the claim as a whole fails to effect any particular
transformation of an article to a different state. The recited steps in the
claim fail to provide meaningful limitations to limit the judicial exception.
In this case, the claim merely uses the claimed computer components as a
tool to perform the abstract idea.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Guidance which references the MPEP §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
Considering the claim both individually and as an ordered combination, it
fails to add subject matter beyond the judicial exception that is not well-
understood, routine, and conventional in the field. Rather the claim uses
well-understood, routine, and conventional activities previously known in
the art and they are recited at a high level of generality. The Specification at
paragraphs 35–38 for example describes using conventional computer
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components such as a processor, software, and computer storage media in a
conventional manner. The claim specifically includes recitations for
computers to implement the method but these computer components are all
used in a manner that is well-understood, routine, and conventional in the
field. Here, the claimed generic computer components which are used to
implement the claimed method are well understood, routine, or conventional
in the field. Here, the claim has not been shown to be “significantly more”
than the abstract idea.
The Appellant at page 11 of the Appeal Brief has also cited to Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), to show that the
claim is not abstract, but the claims in that case were not similar in scope to
those here and were in contrast directed to a self-referential data table.
The Appellant at page 2 of the Reply Brief has also cited to McRO,
Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016),
but the claims in that case are distinguished from this case in being directed
to rules for lip synchronization and facial expression animation.
We note the point about preemption (Reply Br. 4). While pre-
emption “‘might tend to impede innovation more than it would tend to
promote it,’ thereby thwarting the primary object of the patent laws” (Alice,
573 U.S. at 216 (quoting Mayo, 566 U.S. at 71)), “the absence of complete
preemption does not demonstrate patent eligibility” (Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). 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.”).
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For these above reasons the rejection of claim 1 is sustained. Claims
2–5, 8–10, and 13–16 are directed to similar subject matter for which the
same arguments have been presented and the rejection of these claims is
sustained for the same reasons given above.
We reach the same conclusion as to independent system claim 17 and
its dependent claim 19. Here, as in Alice, “the system claims are no different
from the method claims in substance. The method claims recite the abstract
idea implemented on a generic computer; the system claims recite a handful
of generic computer components configured to implement the same idea.”
Alice, 573 U.S. at 226. “[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea ‘while adding the words ‘apply it’’ is not enough for
patent eligibility.” Id. at 223 (quoting Mayo, 566 U.S. at 72). For these
reasons the rejection of claims 17 and 19 is sustained.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1–5, 8–10, 13–17, and 19 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 8–10,
13–17, 19
101 Eligibility 1–5, 8–10,
13–17, 19

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED