Kevin Foley

Patent Trials and Appeals Board

Sep 26, 2019

14701524 - (D) (P.T.A.B. Sep. 26, 2019)

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.
14/701,524 04/30/2015 Kevin Foley 14-2419 1926
63710 7590 09/26/2019
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
lkorovich@cantor.com
patentdocketing@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KEVIN FOLEY
____________

Appeal 2018-006700
Application 14/701,524
Technology Center 3600
____________

Before MAHSHID D. SAADAT, NORMAN H. BEAMER, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–8 and 11–22, which constitute all the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellant, the real party in interest is CFPH LLC. Appeal
Br. 3.
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STATEMENT OF CASE
Introduction
Appellant’s Specification describes “systems and methods for
managing orders to buy or sell trading products, e.g., in an electronic trading
environment.” See Spec. ¶ 2.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows;
1. An apparatus comprising:
at least one processor of at least one computer in
electronic communication with at least one other computer via
an electronic communications network; and
at least one memory having instructions stored thereon
which are configured to, when executed by the at least one
processor, direct the at least one processor to:
receive from a first computer associated with a first
trader a first order to buy or sell a trading product having a first
price and a first size;
receive from a second computer associated with a second
trader a second order to buy or sell the trading product that is
contra to the first order, the second order defining a second
quantity and a price range of possible prices at which the
second order can be executed, the price range comprising at
least a second price, in which the second quantity of the trading
product is reserved in an OMS of the second trader such that
the second quantity of the second order is permitted by the
OMS to be executed at any price within the price range, the
OMS of the second trader comprising at least one electronic
database;
determine whether the first price of the first order is
within the price range of the second order, in which the act of
determining whether the first price of the first order is within
the price range of the second order comprises determining that
the first price of the first order is within the price range of the
second order, in which the act of determining whether the first
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price of the first order is within the price range of the second
order is performed by a first module of a first computer system
of the second user that is separated by a firewall from a second
module of the first computer system that interfaces with the
second computer such that information received by the first
module is protected from disclosure to the second user, and
wherein the first module communicates with corresponding
modules of other computer systems of other traders that are
similarly screened off from the respective other traders by a
respective other firewall;
responsive to determining that the first price of the first
order is within the price range of the second order,
automatically cause to be output to the second trader at a
graphical user interface of a display device electronically
coupled to the second computer (1) the price of the first order
and (2) an execution indicia selectable by the second trader to
cause at least a portion of the second order to be executed
against at least a portion of the first order,
in which the first price of the first order and the execution
indicia are not output or otherwise disclosed to the second
trader prior to the act of determining that the first price of the
first order is within the price range of the second order;
receive from the second computer electronic data
indicating a selection of the execution indicia; and
responsive to receiving the electronic data indicating a
selection of the execution indicia, cause the second order and
the first order to be at least partially matched and executed at
the price of the first order.
Rejection on Appeal
Claims 1–8 and 11–22 stand rejected under 35 U.S.C. § 101 for being
directed to patent-ineligible subject matter. See Final Act. 4–6.

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ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to
make are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). Appellant
does not separately argue the claims. See Appeal Br. 7–12. We select claim
1 as representative. See 37 C.F.R. §41.37(c)(l)(iv).
Arguments
The Examiner determines that the claims are directed to the abstract
idea of a method of buying and selling trading products, “which, when
viewed individually and in combination, constitute an abstract idea of certain
methods of organizing human activity” such as “‘interpersonal activities’ of
‘managing relationships or transactions between people, social activities, or
behaviors,’ ‘satisfying or avoiding a legal obligation,’ and ‘advertising,
marketing, and sales activities or behaviors,’ which are subcategories of
activities that the precedential courts have found to be abstract idea[s] under
‘certain methods of organizing human activity.’” Final Act. 4.
The Examiner further finds:
[D]ata processing involved in the claims (e.g. . . . determine
whether the first price of the first order is within the price range
of the second order. . . , and responsive to determining that the
first price of the first order is within the price range of the
second order, cause to be output to the second trader . . .) is an
“idea of itself (abstract idea)” because it involves “collecting
and comparing known information” (Classen)2, “obtaining and
comparing intangible data” (Cybersource)3, and “collecting

2 Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011).
3 CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed.
Cir. 2011).
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information, analyzing it, and displaying certain results of the
collection and analysis” (Electric Power Group).
Final Act. 5. The Examiner also finds the additional elements do not amount
to significantly more than the judicial exception and merely are involved in
performing activities according to their generic functionalities, which are
well-understood and routine. Final Act. 6. Based on these determinations,
the Examiner concludes that the claims are ineligible under § 101. Final
Act. 7.
Appellant argues that the claims are not directed to an abstract idea
and, similar to the claims in Enfish, “are directed to an improvement in
networked trading systems” and “improve the usability, speed and efficiency
of conventional trading systems.” Appeal Br. 9. According to Appellant,
the Examiner has not shown that “every limitation of each and every claim
taken both together and separately do not add significantly more than the
alleged abstract idea.” Appeal Br. 10. Appellant further argues that the
Examiner has provided no evidence to show that “the arrangement of
elements is conventional or generic.” Appeal Br. 11. Lastly, Appellant
asserts the claims are similar to those in DDR and “recite improvements to
technology and electronic trading that are rooted in networking and
computers.” Id.
Principles of Law
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” See 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. See, e.g., Alice, 573 U.S. at 216 (citation omitted).
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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).
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 water-proof cloth, vulcanizing India
rubber, smelting ores” (Diehr, 450 U.S. at 182 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 176, 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.”). That
said, the Supreme Court also indicated that a claim “seeking patent
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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), and 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
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. (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.
In January 2019, the USPTO published revised guidance on the
application of § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance, 84 Fed. Reg.”).
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 activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
(MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th ed. rev. 08.2017 Jan. 2018)).
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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, and conventional in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, and 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.
Revised Guidance Step 2A — Prong 1
Turning to claim 1, we first note that the claim recites a method and,
therefore, falls within the process category of § 101. But despite falling
within this statutory category, we must still determine whether the claim is
directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S.
at 217. To this end, we determine (1) whether claim 1 recites a judicial
exception (Revised Guidance Step 2A — Prong 1) and, if so, (2) whether the
identified judicial exception is integrated into a practical application
(Revised Guidance Step 2A — Prong 2). See Guidance, 84 Fed. Reg. at 52–
55.
We agree with the Examiner that claim 1 recites a judicial exception.
The recited judicial exception can be categorized as certain methods of
organizing human activity. Appeal Br. 13–14 (Claims App.). The recited
receiving and determining steps, under their broadest reasonable
interpretation, relate to receiving first and second orders to buy or sell a
trading product having a certain price relationship — i.e., certain methods of
organizing human activity directed to the fundamental economic practice of
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ordering a trading product, and, therefore, an abstract idea. See Guidance,
84 Fed. Reg. at 52.
Additionally, Appellant explains that “[t]he specification explains
problems found in prior art trading systems that lack speed, efficiency and
usability” and points out that “[n]umerous paragraphs throughout the
specification make reference to the various problems and solutions offered
by the claims. These paragraphs identify problems and solutions that are
unique and acute in the modem world of computers and networking applied
to computerized trading.” Appeal Br. 10 (citing no specific paragraphs in
the Specification). However, the Specification describes access to other
trading interests in specific products as one of the goals of the claimed
invention. See Spec. pp.1 –2, ¶¶ 4–6; pp. 22–23, ¶¶ 108–110. Using
investors’ trading information about a first order to define the quantity and a
price range for a second order falls under “a fundamental economic
practice,” i.e., an abstract idea. For the above reasons, we determine claim 1
recites a fundamental economic practice, identified as an abstract idea in the
Guidance.
Revised Guidance Step 2A — Prong 2
Because claim 1 recites an abstract idea, we must determine whether
the abstract idea is integrated into a practical application, namely whether
the claim applies, relies on, or uses the abstract idea in a manner that
imposes a meaningful limit on the abstract idea, such that the claim is more
than a drafting effort designed to monopolize the abstract idea. See
Guidance, 84 Fed. Reg. at 53. To this end, we (1) identify whether there are
any additional, recited elements beyond the judicial exception, and (2)
evaluate those elements individually and collectively to determine whether
they integrate the exception into a practical application. See id. at 54–55.
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The additional elements beyond the above-identified judicial
exceptions recited in claim 1 are: (1) “[a]n apparatus comprising: at least one
processor of at least one computer in electronic communication with at least
one other computer via an electronic communications network;” (2) “at least
one memory having instructions stored thereon which are configured to,
when executed by the at least one processor, direct the at least one processor
to;” and (3) first and second computers.4 Appeal Br. 13–14 (Claims App.).
When considering these elements individually or in combination, we
determine they do not integrate the above-identified judicial exceptions into
a practical application.
First, we are not persuaded that the claimed invention improves the
computers or their components’ functionality or efficiency, or otherwise
changes the way those devices function, at least in the sense contemplated
by the Federal Circuit in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016), and McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299 (Fed. Cir. 2016), despite Appellant’s arguments to the
contrary (Appeal Br. 9–10; see also Ans. 3). Specifically, the claimed
invention is said to “improve the usability, speed and efficiency of
conventional trading systems” and prevent “delays such as those caused by
inefficient display or order entry” which “cause[s] capital markets to operate
ineffectively and can lead to huge sums of financial losses and inefficient
distributions of global resources” by increasing “speed, efficiency and
usability of these systems.” Appeal Br. 9. However, merely “[u]sing a
computer to accelerate an ineligible mental process does not make that

4 See Spec. pp. 29–31, ¶¶ 6–15 (Appellant identifies these components as
generic computer and software elements).
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process patent-eligible.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can. (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012); see also CLS Bank
Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc)
(“[S]imply appending generic computer functionality to lend speed or
efficiency to the performance of an otherwise abstract concept does not
meaningfully limit claim scope for purposes of patent eligibility.”), aff’d,
573 U.S. 208 (2014).
Further, the receiving and determining steps of claim 1 are not used to
improve the performance or any capability of a computer. Instead, these
steps merely enable the collection of the same types of data in a different,
albeit improved, manner to improve a trader’s ability to obtain and compare
order data for a number of trading products. Although the claimed functions
permit the first order information to be used in determining the size and
price range of a second order, Appellant does not explain how this added
information improves the functioning of a computer. Indeed, any “speed,
efficiency and usability of these systems” would be not because a computer
has been improved, but because the data regarding the first order is available
for determining the second order.
In fact, Appellant has not shown the claim includes additional
elements that improve the underlying computer, or other technology, nor has
provided support for the argument that the claimed invention represents an
improvement to the functioning of a computer. See Intellectual Ventures
ILLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)
(“[Merely adding computer functionality to increase the speed or efficiency
of the process does not confer patent eligibility on an otherwise abstract
idea.”); cf. 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
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the computer. This is not a technical solution to a technical problem.”).
Moreover, Appellant’s purportedly improved abstract concept is still
an abstract concept under the Guidance. See Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“a claim for a new
abstract idea is still an abstract idea.”) (emphasis omitted). That is,
identifying and denying orders is part of the recited abstract idea as
discussed above. See Ans. 6–7. As the argued elements are part of the
abstract idea, they are not additional elements that integrate the identified
abstract idea into a practical application. See Memorandum, 84 Fed. Reg. at
54–55 (“evaluate integration into a practical application by: (a) Identifying
whether there are any additional elements recited in the claim beyond the
judicial exception(s)”).
Accordingly, we determine the claim does not integrate the judicial
exception into a practical application. See Memorandum, 84 Fed. Reg.
at 54. We determine the “claim recites a judicial exception and fails
to integrate the exception into a practical application,” and therefore we
proceed with “further analysis pursuant to the second step of the Alice/Mayo
test (USPTO Step 2B).” Guidance, 84 Fed. Reg. at 51.
Revised Guidance Step 2B
Under the Revised Guidance, if a claim: (1) recites a judicial
exception; and (2) does not integrate that exception into a practical
application, we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
See Revised Guidance, 84 Fed. Reg. at 56.
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We find Appellant’s argument that “[h]ere, like in DDR holdings, the
claims clearly recite improvements to technology and electronic trading that
are rooted in networking and computers,” citing DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), unavailing. Appeal
Br. 11–12. In DDR, the court determined that the claims at issue were
necessarily rooted in computer technology in order to address the Internet-
centric problem of how to provide user access to computer-implemented
applications over the Internet. DDR, 773 F.3d at 1257. In contrast, the
receiving and determining steps related to the first and second order to buy
or sell a trading product, as recited in claim 1, are not necessarily rooted in
computer technology, as the recited receiving the first order and the second
order, as well as the evaluation of the price of the order, could also occur
outside the context of computer technology (e.g., if the receiving orders and
determining their price are implemented using pen and paper).
On the record before us, we are unpersuaded of error in the
Examiner’s determination that additional elements, such as a processor, a
graphical user interface, and first and second computers, are nothing more
than generic elements using conventional concepts. See Final Act. 5–6. In
fact, the Specification supports the Examiner’s finding that additionally
recited elements are merely generic computer elements performing generic
computer functions, by providing non-limiting and exemplary descriptions
of generic computer components that are used to aggregate data to facilitate
buying or selling trading products. See, e.g., Spec. pp. 29–31, ¶¶ 6–15.
Other Considerations
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. Appeal Br. 7–12. We find that our analysis above
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substantially covers the substance of all the arguments, which have been
made. But, for purposes of completeness, we will add the following.
To the extent Appellant argues that the Examiner erred in adequately
supporting this determination by not providing evidence, or considering the
claims in their entirety, to justify identifying the specific limitations as
reciting an abstract idea (see Appeal Br. 10–11), we are unpersuaded. In this
regard, there is no requirement that Examiners must provide evidentiary
support in every case before a conclusion can be made that a claim is
directed to an abstract idea. See, e.g., MPEP § 2106.07(a)(III) (2018) (“The
courts consider the determination of whether a claim is eligible (which
involves identifying whether an exception such as an abstract idea is being
claimed) to be a question of law. Thus, the court does not require ‘evidence’
that a claimed concept is a judicial exception, and generally decides the legal
conclusion of eligibility without resolving any factual issues.” (Citations
omitted.)) Moreover, the Federal Circuit made clear in Berkheimer that “not
every § 101 determination contains genuine disputes over the underlying
facts material to the § 101 inquiry.” Berkheimer v. HP Inc., 881 F.3d 1360,
1368 (Fed. Cir. 2018). In fact, the Federal Circuit in Berkheimer did not
require evidentiary support for independent claim 1 because “[t]he
limitations [of claim 1] amount to no more than performing the abstract idea
of parsing and comparing data with conventional computer components.”
Id. at 1370.
All that is required of the USPTO to meet its prima facie burden of
production is that the Examiner set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently articulated and
informative manner as to meet the notice requirement of 35 U.S.C. § 132.
As the statute itself instructs, the Examiner must “notify the applicant,”
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“stating the reasons for such rejection,” “together with such information and
references as may be useful in judging the propriety of continuing the
prosecution of his application.” 35 U.S.C. § 132; see also In re Jung, 637
F.3d 1356, 1363 (Fed. Cir. 2011) (declining “to impose a heightened burden
on examiners beyond the notice requirement of § 132”). Here, as we found
above, the Examiner has made these findings as required by the statute. See
Final Act. 11–19. Specifically, in rejecting the pending claims under § 101,
the Examiner notified Appellant that the claims recite steps that describe the
concepts of buying and selling trading products that is a fundamental
economic practice (Final Act. 4) and that the claims do not include
additional elements that “would amount to significantly more than the
abstract idea.” Final Act. 5. Thus, we find that a prima facie case was
established by the Examiner.
Summary
For at least the above reasons, we agree with the Examiner that claim
1 is “directed to” an abstract idea and does not recite an “inventive concept.”
Accordingly, we sustain the Examiner’s rejection of claim 1 and the
remaining claims which fall therewith, under 35 U.S.C. § 101.

CONCLUSION
We affirm the Examiner’s rejection of claims 1–8 and 11–22 under
35 U.S.C. § 101.
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).

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In summary:
Claims
Rejected
Basis Affirmed Reversed
1–8 and 11–22 § 101 1–8 and 11–22
Overall Outcome 1–8 and 11–22

AFFIRMED