Kirwin, Joan et al.

Patent Trials and Appeals Board

Aug 11, 2020

12771054 - (D) (P.T.A.B. Aug. 11, 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.
12/771,054 04/30/2010 Andrew C. GILBERT 02-1051-C1 1879
63710 7590 08/11/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
FELTEN, DANIEL S
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
08/11/2020 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):
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 MARY ANN GILBERT and JOAN KIRWIN
____________

Appeal 2019-003190
Application 12/771,054
Technology Center 3600
____________

Before JOSEPH L. DIXON, ST. JOHN COURTENAY III, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 9–13, and 21–24, i.e., all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2017). Appellant identifies the real party in interest
as BGC Partners, Inc. Appeal Br. 3.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the “invention relates to crossing
markets.” Spec. ¶ 1.2 The Specification explains that “[a] crossing market
or ‘crossing’ is a designated time that buyers and sellers meet to transact
on a given issue of a traded bond or to trade a pre-determined tradeable
instrument.” Id. The Specification also explains that dealers and traders
“benefit from supporting crossings because the dealers and traders have an
opportunity to increase their exposure to additional customers and, if
designed properly, the crossing provides the respective customers of the
dealers and traders with advantageous pricing conditions.” Id. ¶ 3. Hence,
the invention endeavors to facilitate “trading at crossing markets by
establishing crossing market trading rules, incentivizing crossing market
participants, and improving the efficiency of crossing market trading.” Id.
at 19 (Abstract).
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads
as follows:
1. A method for providing a crossing market for trading
a tradeable instrument, the method comprising:
receiving by a computer a plurality of bid-offer liquidity
spreads;

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed April 30, 2010; “Final Act.” for the Final Office Action,
mailed January 22, 2016; “Appeal Br.” for the Appeal Brief, filed
January 26, 2018; “Ans.” for the Examiner’s Answer, mailed January 25,
2019; and “Reply Br.” for the Reply Brief, filed March 15, 2019.
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receiving by the computer a plurality of customer buy
orders and a plurality of customer sell orders, wherein each buy
order and each sell order includes a respective size;
determining by the computer an order imbalance based
on the received plurality of customer orders, wherein the order
imbalance includes a difference between a total size of the buy
orders and a total size of the sell orders;
selecting by the computer a bid-offer liquidity spread
from the plurality of bid-offer liquidity spreads, wherein the
selected bid-offer liquidity spread includes an offer to buy at
a buy-price and an offer to sell at a sell-price; and
calculating by the computer a crossing price based on the
order imbalance and the selected bid-offer liquidity spread,
wherein calculating the crossing price comprises:
calculating a first midpoint-price that is a midpoint
between the buy-price and the sell-price;
calculating a second midpoint-price, wherein
the second midpoint price is a midpoint
between the first midpoint-price and the buy-price
when the difference between the total size of the
buy orders and the total size of the sell orders
comprises a sell order size, and
the second midpoint price is a midpoint
between the first midpoint-price and the sell-price
when the difference between the total size of the
buy orders and the total size of the sell orders
comprises a buy order size, and
calculating the crossing price that is a midpoint
between the first midpoint-price and the second mid-
point price.
Appeal Br. 18 (Claims App.).
The Rejection on Appeal
Claims 1, 9–13, and 21–24 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Final Act. 5–7.
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ANALYSIS
We have reviewed the rejection in light of Appellant’s arguments that
the Examiner erred. For the reasons explained below, we agree with the
Examiner’s conclusion concerning ineligibility under § 101. We adopt the
Examiner’s findings and reasoning in the Final Office Action and Answer.
See Final Act. 3–7; Ans. 3–8. We add the following to address and
emphasize specific findings and arguments.
Introduction
The Patent Act defines patent-eligible subject matter broadly:
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. In Mayo and Alice, the
Supreme Court explained that § 101 “contains an important implicit
exception” for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); see Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent eligibility. Mayo,
566 U.S. at 77–80; Alice, 573 U.S. at 217–18.
Under Mayo/Alice step one, we “determine whether the claims at
issue are directed to” a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the “focus” of the claims at issue and their “character as a whole.”
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
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In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Guidance”). The 2019 Guidance applies to the Board. Id. at 50–51, 57 n.42;
see 35 U.S.C. § 3(a)(2)(A) (investing the Director with responsibility “for
providing policy direction” for the PTO).
The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54–55. Prong one
requires evaluating “whether the claim recites a judicial exception, i.e., an
abstract idea, a law of nature, or a natural phenomenon.” Id. at 54. “If the
claim does not recite a judicial exception, it is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the claim does recite a judicial
exception, then it requires further analysis” under prong two. Id. Prong two
requires evaluating “whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception.” Id. “When
the exception is so integrated, then the claim is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the judicial exception,” and it “requires further analysis” under
Mayo/Alice step two (PTO step 2B). Id.
Under Mayo/Alice step two, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. Alice, 573 U.S. at 217–18,
221–22 (quoting Mayo, 566 U.S. at 78–79). Step two involves the search for
an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of Fla.
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Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.
Cir. 2019). “[A]n inventive concept must be evident in the claims.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Mayo/Alice Step One: PTO Step 2A Prong One
Patent-ineligible abstract ideas include fundamental economic
practices, mathematical formulas, and mental processes. See, e.g., Alice,
573 U.S. at 219–20 (fundamental economic practice of intermediated
settlement); Bilski v. Kappos, 561 U.S. 593, 599, 611–12 (2010)
(fundamental economic practice of hedging or protecting against risk in
independent claim and mathematical formula in dependent claim); Parker v.
Flook, 437 U.S. 584, 585–86, 596–98 (1978) (mathematical formula for
calculating updated alarm limit); Gottschalk v. Benson, 409 U.S. 63, 65–67
(1972) (mental process of converting binary-coded-decimal representation
to binary representation). The 2019 Guidance specifies three groupings
of abstract ideas: (1) certain methods of organizing human activity,
(2) mathematical concepts, and (3) mental processes. 84 Fed. Reg. at 51–52.
In Alice, the Supreme Court “did not establish any ‘precise contours’
for defining whether claims are directed to ‘abstract ideas’ or something
else.” Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1315 (Fed. Cir.
2019) (citing Alice, 573 U.S. at 221). Further, for Mayo/Alice step one, the
Federal Circuit has noted that “[a]n abstract idea can generally be described
at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1240 (Fed. Cir. 2016).
Here, the Examiner determines that the claims are directed to the
abstract idea of “providing a crossing market” that “allows an arbitrage”
when the bid prices exceed the ask prices. Final Act. 6; Ans. 3–4. The
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Examiner explains that an arbitrage involves “the simultaneous buying and
selling of securities, currency, or commodities in different markets or in
derivative forms in order to take advantage of differing prices for the same
asset.” Final Act. 3. Hence, the Examiner concludes that the claims
encompass a fundamental economic practice, i.e., the “buying and selling
of securities.” Ans. 5; see id. at 3–4; Final Act. 3, 6.
Appellant disputes that independent claims 1 and 13 are directed to an
abstract idea. See Appeal Br. 8–16; Reply Br. 2–7. Specifically, Appellant
asserts that the Examiner “oversimplifies the claims by looking at them
generally and fails to account for the specific” limitations recited in the
claims, including calculating “a crossing price based on the order imbalance
and the selected bid-offer liquidity spread.” Appeal Br. 8–9 (emphasis
omitted).
We disagree that the Examiner oversimplifies the claims. In
determining that the claims are directed to an abstract idea, the Examiner
accurately assesses the “focus” of the claims and their “character as a
whole.” See Final Act. 3–4, 6; Ans. 3–4; see also SAP Am., 898 F.3d
at 1167.
In addition, we determine that each independent claim recites abstract
ideas falling within two of the three groupings of abstract ideas specified in
the 2019 Guidance. See 84 Fed. Reg. at 51–52. In particular, each claim
recites (1) a certain method of organizing human activity ineligible for
patenting and (2) mathematical concepts.
First, the 2019 Guidance describes certain methods of organizing
human activity ineligible for patenting as including “fundamental economic
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principles or practices.” 84 Fed. Reg. at 52. Here, claim 1 recites the
following limitations encompassing a fundamental economic practice:
● “receiving . . . a plurality of bid-offer liquidity spreads”;
● “receiving . . . a plurality of customer buy orders and a
plurality of customer sell orders, wherein each buy order
and each sell order includes a respective size”;
● “determining . . . an order imbalance based on the
received plurality of customer orders, wherein the order
imbalance includes a difference between a total size of
the buy orders and a total size of the sell orders”;
● “calculating . . . a crossing price based on the order
imbalance and the selected bid-offer liquidity spread”;
● “calculating a first midpoint-price that is a midpoint
between the buy-price and the sell-price”;
● “calculating a second midpoint-price, wherein the second
midpoint price is a midpoint between the first midpoint-
price and the buy-price when the difference between the
total size of the buy orders and the total size of the sell
orders comprises a sell order size, and the second
midpoint price is a midpoint between the first midpoint-
price and the sell-price when the difference between the
total size of the buy orders and the total size of the sell
orders comprises a buy order size”; and
● “calculating the crossing price that is a midpoint between
the first midpoint-price and the second mid-point price.”
Appeal Br. 18. Claim 13 recites similar limitations. Id. at 19–20.
Each of the above-identified limitations contributes to buying and
selling securities, i.e., trading activities. See Ans. 5. For instance, the
“receiving” limitations involve data gathering for buying and selling
securities, e.g., gathering (1) bid-offer liquidity spreads, (2) bid quantities
and prices, and (3) offer quantities and prices. Further, the “determining”
and “calculating” limitations involve establishing a price for buying and
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selling securities, i.e., a crossing price. Buying and selling securities is a
fundamental economic practice long prevalent in our system of commerce.
See Final Act. 3, 6; Ans. 5. The 2019 Guidance identifies a fundamental
economic practice as a certain method of organizing human activity
ineligible for patenting, and thus an abstract idea. 84 Fed. Reg. at 52.
Second, the 2019 Guidance describes mathematical concepts as
including “mathematical relationships, mathematical formulas or equations,
[and] mathematical calculations.” 84 Fed. Reg. at 52. Here, claim 1 recites
the following limitations encompassing mathematical calculations:
● “determining . . . an order imbalance based on the
received plurality of customer orders, wherein the order
imbalance includes a difference between a total size of
the buy orders and a total size of the sell orders”;
● “calculating . . . a crossing price based on the order
imbalance and the selected bid-offer liquidity spread”;
● “calculating a first midpoint-price that is a midpoint
between the buy-price and the sell-price”;
● “calculating a second midpoint-price, wherein the second
midpoint price is a midpoint between the first midpoint-
price and the buy-price when the difference between the
total size of the buy orders and the total size of the sell
orders comprises a sell order size, and the second
midpoint price is a midpoint between the first midpoint-
price and the sell-price when the difference between the
total size of the buy orders and the total size of the sell
orders comprises a buy order size”; and
● “calculating the crossing price that is a midpoint between
the first midpoint-price and the second mid-point price.”
Appeal Br. 18. Claim 13 recites similar limitations. Id. at 19–20.
Each of the above-identified limitations involves mathematical
calculations. For instance, the “determining” limitation involves summing
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the buy orders, summing the sell orders, and comparing the two sums.
Further, the “calculating” limitations expressly require mathematical
calculations. The 2019 Guidance identifies mathematical calculations as
mathematical concepts, and thus an abstract idea. 84 Fed. Reg. at 52.
For the reasons discussed above, each independent claim recites
(1) a certain method of organizing human activity ineligible for patenting
and (2) mathematical concepts. Thus, each claim recites abstract ideas.
Mayo/Alice Step One: PTO Step 2A Prong Two
Because we determine that each independent claim recites abstract
ideas, we consider whether each claim as a whole integrates the recited
abstract ideas into a practical application. See 84 Fed. Reg. at 54–55. “Only
when a claim recites a judicial exception and fails to integrate the exception
into a practical application, is the claim ‘directed to’ a judicial exception
. . . .” Id. at 51.
As an additional element, each independent claim recites a
“computer.” Appeal Br. 18–20. As the Examiner properly reasons, each
claim recites “one additional element: that a computer is used to perform
both the determining and calculating steps.” Ans. 6.
We determine that each independent claim as a whole does not
integrate the recited abstract ideas into a practical application because the
additional element does not impose meaningful limits on the abstract ideas.
See 84 Fed. Reg. at 53–54; see also Final Act. 6–7; Ans. 4–6. Instead, the
claimed “computer” constitutes a generic computer that performs generic
computer functions. See Ans. 6–8 (citing Spec. ¶ 25); Spec. ¶¶ 25, 28.
Appellant contends that “the claimed subject matter allows the
computer to perform a function not previously performable by a computer.”
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Appeal Br. 11; Reply Br. 3. Further, Appellant asserts that “the claims recite
specific computer operations that allow the computer to perform a function
that conventional computers cannot perform.” Appeal Br. 9 (emphasis by
Appellant).
Appellant’s arguments do not persuade us of Examiner error because
the claimed “computer” does not perform a function that conventional
computers cannot perform. The claimed “computer” does nothing more than
perform conventional arithmetic and logical operations, e.g., addition,
subtraction, multiplication, division, AND, OR, NAND, and NOR. See
Appeal Br. 18–20; Ans. 6. Programing a computer to perform an allegedly
novel algorithm does not mean that the computer performs a function not
previously performable by a computer. See Alice, 573 U.S. at 213, 225–27;
Bilski, 561 U.S. at 599, 609–13; SAP Am., 898 F.3d at 1163–65. The
computer accomplishes the allegedly novel algorithm by performing
conventional arithmetic and logical operations.
Appellant asserts that the claims recite “an improvement in the
functioning of a computer, or an improvement to other technology or
technical field.” Reply Br. 3–5 (emphasis omitted); see Appeal Br. 11–13.
In particular, Appellant contends that the claimed features (1) “result[] in
automatically-generated volume at the crossing without market maker
participation”; (2) “generate[] volume by uniting large buyers and large
sellers at one time”; and (3) “result in at least a distinct advantage in high-
volume trading situations such as a crossing.” Reply Br. 3–5 (emphasis
omitted); see id. at 7–8; Appeal Br. 12–13.
We disagree that the claims recite “an improvement in the functioning
of a computer, or an improvement to other technology or technical field.”
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See Ans. 6. Each independent claim requires receiving “a plurality of
customer buy orders” and “a plurality of customer sell orders.” Appeal
Br. 18–19. A “plurality” means “more than one.” August Tech. Corp. v.
Camtek, Ltd., 655 F.3d 1278, 1286 (Fed. Cir. 2011). As broadly drafted,
each claim encompasses processing only four orders: two buy orders and
two sell orders. Contrary to Appellant’s contention, the claims do not
require “high-volume trading.” Unclaimed features do not support patent
eligibility. See ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 769
(Fed. Cir. 2019); Berkheimer v. HP Inc., 881 F.3d 1360, 1369–70 (Fed. Cir.
2018); Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d
1329, 1338–39 (Fed. Cir. 2017); Intellectual Ventures I LLC v. Erie Indem.
Co., 850 F.3d 1315, 1331–32 (Fed. Cir. 2017).
Appellant argues that “the claimed features help reduce the number
of transactions over the network, which in turn, helps reduce computer
workload including computer resources such as memory resources,
processor resources, and network resources such as network
bandwidth.” Appeal Br. 13 (emphasis by Appellant); see id. at 14; Reply
Br. 3–5, 7–8.
We disagree that the claims “reduce the number of transactions over
the network.” See Ans. 6. The claims do not require a network. See Appeal
Br. 18–20. The claims do not specify how the claimed “computer” receives
“a plurality of bid-offer liquidity spreads,” “a plurality of customer buy
orders,” or “a plurality of customer sell orders.” Id. As discussed above,
unclaimed features do not support patent eligibility. See, e.g., ChargePoint,
920 F.3d at 769.
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Appellant asserts that “the features of the instant claims . . . do not
preempt all ways of achieving the intended result because the claimed
recitations are very specific and do not cover all possible approaches.”
Appeal Br. 14 (emphasis omitted).
But Appellant wrongly relies on an absence of preemption to establish
patent eligibility. See Ans. 6. While preemption may denote ineligibility, its
absence does not establish eligibility. See FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering a
patent-ineligible concept, preemption concerns “are fully addressed and
made moot” by an analysis under the Mayo/Alice framework. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Appellant analogizes the claims here to the claims in Core Wireless
that covered “an improved user interface for electronic devices.” Reply
Br. 5–6 (quoting Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.,
880 F.3d 1356, 1363 (Fed. Cir. 2018)). Specifically, Appellant asserts that
the “claimed subject matter is also drawn to an improved interface which
provides advantages over the prior art systems which improves the
efficiency of the electronic devices, thereby overcoming disadvantages
of prior systems.” Id. at 6 (emphasis by Appellant).
We disagree that the claims here resemble the claims in Core
Wireless. There, the “claims recite[d] a specific improvement over prior
systems,” i.e., a “particular manner of summarizing and presenting
information in electronic devices.” Core Wireless, 880 F.3d at 1362–63.
The Federal Circuit decided that the claims satisfied § 101 under Mayo/Alice
step one because the “invention improve[d] the efficiency of using the
electronic device.” Id. at 1363.
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Unlike the claims in Core Wireless, the claims here do not improve
the efficiency of using a computer or any other electronic device. See
Ans. 6. The claims do not recite an advance in hardware or software that,
for example, causes a computer to operate faster or more efficiently. See
Appeal Br. 18–20. Further, the claims do not require a user interface. Id.
The claims do not specify how a user interacts with the claimed “computer.”
Id. As discussed above, unclaimed features do not support patent eligibility.
See, e.g., ChargePoint, 920 F.3d at 769.
A “process that start[s] with data, add[s] an algorithm, and end[s] with
a new form of data [is] directed to an abstract idea.” RecogniCorp, 855 F.3d
at 1327. Here, each independent claim recites a “process that start[s] with
data, add[s] an algorithm, and end[s] with a new form of data.” See Spec.
¶¶ 13, 16, 33–34 (describing a trading algorithm). Hence, each claim is
directed to an abstract idea.
The 2019 Guidance identifies exemplary considerations indicating
that additional elements in claims “may have integrated the [judicial]
exception into a practical application.” 84 Fed. Reg. at 55 & nn.25–29
(citing Manual of Patent Examining Procedure (MPEP) §§ 2106.05(a)–(c),
2106.05(e) (9th ed. rev. 08.2017 Jan. 2018)). As the above analysis
indicates, we have evaluated Appellant’s arguments in light of those
exemplary considerations. For the reasons discussed above, however, we
determine that each independent claim as a whole does not integrate the
recited abstract ideas into a practical application. Thus, each claim is
directed to a judicial exception and does not satisfy § 101 under Mayo/Alice
step one.
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Mayo/Alice Step Two: PTO Step 2B
Because we determine that each independent claim is directed
to a judicial exception, we “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. See Alice, 573 U.S.
at 217–18, 221–22 (quoting Mayo, 566 U.S. at 78–79). Under Mayo/Alice
step two, we “look with more specificity at what the claim elements add, in
order to determine ‘whether they identify an “inventive concept” in the
application of the ineligible subject matter’ to which the claim is directed.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258
(Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016)). An “inventive concept” requires more than
“well-understood, routine, conventional activity already engaged in” by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79–80). But a
“non-conventional and non-generic arrangement of known, conventional
pieces” may provide an “inventive concept” satisfying step two. BASCOM
Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350
(Fed. Cir. 2016).
As discussed above, each independent claim recites a “computer.”
Appeal Br. 18–20. As also discussed above, the claimed “computer”
constitutes a generic computer that performs generic computer functions.
See Ans. 6–8 (citing Spec. ¶ 25); Spec. ¶¶ 25, 28.
The Specification describes the claimed “computer” generically and
evidences its conventional nature. See Spec. ¶¶ 25, 28. For example, the
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Specification explains that a “computer” may include “a computer,
processor, personal computer, laptop computer, handheld computer, personal
digital assistant, computer terminal, a combination of such devices, or any
other suitable data processing device.” Id. ¶ 25.
Simply implementing an abstract idea using conventional machines
or devices “add[s] nothing of substance.” See Alice, 573 U.S. at 226–27;
see also Mayo, 566 U.S. at 84–85 (explaining that “simply implementing a
mathematical principle on a physical machine” does not suffice for patent
eligibility) (citing Gottschalk, 409 U.S. at 64–65, 71).
Moreover, the claimed “computer” operates to receive, manipulate,
and store data. Appeal Br. 20–22; see Ans. 7–8. Court decisions have
recognized that generic computers operating to receive, manipulate, and
store data are well understood, routine, and conventional to a skilled artisan.
See, e.g., Alice, 573 U.S. at 226–27; SAP Am., 898 F.3d at 1164–65 & n.1,
1170; Apple, 842 F.3d at 1234, 1241–42; Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1316–20 (Fed. Cir. 2016) (“Symantec”);
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir.
2015); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715–16 (Fed. Cir.
2014); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014);
see also Ans. 7–8 (citing Alice and Flook).
For example, the system claims in Alice recited a “data processing
system” with a “communications controller” and a “data storage unit.”
Alice, 573 U.S. at 226. The Supreme Court decided that the system claims
failed to satisfy § 101 because “[n]early every computer” includes those
generic components for performing “basic calculation, storage, and
transmission functions” and the system claims simply implemented the same
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abstract idea as the method claims. Id. at 226–27. The Court reasoned that
(1) “the system claims are no different from the method claims in
substance”; (2) “[t]he method claims recite the abstract idea implemented on
a generic computer”; and (3) “the system claims recite a handful of generic
computer components configured to implement the same idea.” Id. at 226.
Here, the claimed “computer” performs “basic calculation, storage,
and transmission functions” that nearly every computer performs. Appeal
Br. 18–20; see Ans. 6, 8. Nothing in the claims “requires anything other
than conventional computer . . . components operating according to their
ordinary functions.” See Two-Way Media, 874 F.3d at 1339, 1341.
Hence, the claimed “computer” does not satisfy the “inventive
concept” requirement. See, e.g., Customedia Techs., LLC v. Dish Network
Corp., 951 F.3d 1359, 1361, 1366 (Fed. Cir. 2020) (describing the claimed
“processor,” “storage device,” “programmable receiver unit,” and “remote
server” as “generic computer components”); Mortg. Grader, Inc. v. First
Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (holding
that “generic computer components such as an ‘interface,’ ‘network,’ and
‘database’” did not satisfy the “inventive concept” requirement);
FairWarning, 839 F.3d at 1095–96 (describing the claimed
“microprocessor” and “user interface” as “generic computer elements”);
Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App’x 1014, 1016–17
(Fed. Cir. 2017) (describing the claimed “authentication server,” “access
server,” “Internet Protocol network,” “client computer device,” and
“database” as “indisputably generic computer components”); Ans. 7–8.
Further, if claim 1’s “receiving” limitations and claim 13’s “receive”
limitations do not comprise part of a fundamental economic practice, they
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still do not satisfy the “inventive concept” requirement because they
constitute insignificant extra-solution activity. See, e.g., Mayo, 566 U.S.
at 79; Bilski, 561 U.S. at 611–12 (establishing inputs for mathematical
formula); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363–64
(Fed. Cir. 2015); Ultramercial, 772 F.3d at 716; CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011); In re Grams,
888 F.2d 835, 839–40 (Fed. Cir. 1989).
As an example of insignificant extra-solution activity, in Mayo the
Supreme Court decided that measuring metabolite levels for later analysis
constituted purely “conventional or obvious” pre-solution activity. Mayo,
566 U.S. at 79. Similarly, the Federal Circuit has held that mere data-
gathering steps “cannot make an otherwise nonstatutory claim statutory.”
CyberSource, 654 F.3d at 1370 (quoting Grams, 888 F.2d at 840). The
Federal Circuit has also held that (1) presenting offers to potential customers
and (2) gathering statistics concerning responses were “conventional data-
gathering activities that [did] not make the claims patent eligible.” OIP
Techs., 788 F.3d at 1363–64. Consistent with those decisions, the MPEP
identifies “gathering data” as an example of insignificant pre-solution
activity. MPEP § 2106.05(g).
Here, claim 1’s “receiving” limitations and claim 13’s “receive”
limitations amount to mere data-gathering steps and require nothing
unconventional or significant. See Classen Immunotherapies, Inc. v. Biogen
IDEC, 659 F.3d 1057, 1067 (Fed. Cir. 2011) (analogizing “data gathering”
to “insignificant extra-solution activity”). In particular, claim 1’s
“receiving” limitations operate to make data available for processing like the
“conventional data-gathering activities” in OIP Technologies. See OIP
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Techs., 788 F.3d at 1363–64. Claim 13’s “receive” limitations operate
similarly.
Appellant asserts that the independent claims satisfy the “inventive
concept” requirement because “the claimed techniques include determining
a crossing price that results in automatically-generated volume at the
crossing without market maker participation.” Reply Br. 7–8 (emphasis
omitted).
But Appellant wrongly relies on the recited abstract ideas to satisfy
the “inventive concept” requirement. A “claimed invention’s use of the
ineligible concept,” e.g., an abstract idea, “cannot supply the inventive
concept that renders the invention ‘significantly more’ than that ineligible
concept.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290
(Fed. Cir. 2018). Under “the Mayo/Alice framework, a claim directed to a
newly discovered” abstract idea “cannot rely on the novelty of that discovery
for the inventive concept necessary for patent eligibility.” Genetic Techs.
Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
Appellant contends that the “lack of prior art citations” evidences
patent eligibility. Appeal Br. 15; see id. at 11. But the absence of
anticipation and obviousness “does not resolve the question of whether
the claims embody an inventive concept” under Mayo/Alice step two.
Symantec, 838 F.3d at 1315; see SAP Am., 898 F.3d at 1163; Ans. 6–7.
“The search for a § 101 inventive concept” differs “from demonstrating
§ 102 novelty.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016); see Two-Way Media, 874 F.3d at 1340; Ans. 7. “The
‘novelty’ of any element[s] or steps” in a claim or even the claim itself “is of
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no relevance in determining whether the subject matter of a claim” satisfies
§ 101. Diehr, 450 U.S. at 188–89.
Appellant cites a PTO memorandum about Berkheimer.3 See Reply
Br. 7. Appellant then asserts that the § 101 rejection “merely provides
conclusory statements and does not comport with the Berkheimer Memo.”
Id.
But Appellant concedes that “[a] citation to one or more . . . court
decisions” may demonstrate that additional elements are well understood,
routine, and conventional to a skilled artisan. Reply Br. 7. As discussed
above, court decisions have recognized that generic computers operating
to receive, manipulate, and store data are well understood, routine, and
conventional to a skilled artisan. See, e.g., Alice, 573 U.S. at 226–27;
SAP Am., 898 F.3d at 1164–65 & n.1, 1170; Apple, 842 F.3d at 1234,
1241–42; Symantec, 838 F.3d at 1316–20; Versata, 793 F.3d at 1334;
Ultramercial, 772 F.3d at 715–16; buySAFE, 765 F.3d at 1355; see also
Ans. 7–8 (citing Alice and Flook).
“Whether a combination of claim limitations supplies an inventive
concept that renders a claim ‘significantly more’ than an abstract idea to
which it is directed is a question of law.” BSG Tech, 899 F.3d at 1290.
Considering the limitations as an ordered combination adds nothing to the
abstract ideas that is not already present when considering the limitations
separately. See Mayo, 566 U.S. at 79; Final Act. 6–7; Ans. 4–5. The
ordered combination of limitations in each independent claim amounts to

3 PTO Memorandum, Changes in Examination Procedure Pertaining
to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) (Apr. 19, 2018).
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nothing more than the abstract ideas implemented with a generic computer
that performs generic computer functions. See Alice, 573 U.S. at 225–26;
Ans. 6–8. Hence, we conclude that the ordered combination of limitations in
each independent claim does not supply an “inventive concept” that renders
the claim “significantly more” than the abstract ideas. See Final Act. 6–7;
Ans. 4–5, 7–8. Thus, each claim does not satisfy § 101 under Mayo/Alice
step two.
Summary for Independent Claims 1 and 13
For the reasons discussed above, Appellant’s arguments have not
persuaded us of any error in the Examiner’s findings or conclusions under
Mayo/Alice step one or step two. Hence, we sustain the § 101 rejection of
the independent claims.
Dependent Claims 9–12 and 21–24
We also sustain the § 101 rejection of dependent claims 9–12 and
21–24 because Appellant does not argue eligibility separately for them.
See Appeal Br. 8–16; Reply Br. 2–8; 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
We affirm the Examiner’s decision to reject claims 1, 9–13, and
21–24.
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 9–13,
21–24 101 Eligibility
1, 9–13,
21–24
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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)(1)(iv).
See 37 C.F.R. § 41.50(f).
AFFIRMED