Nasdaq Technology AB

Patent Trials and Appeals Board

Jun 2, 2021

2021001566 (P.T.A.B. Jun. 2, 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.
16/032,740 07/11/2018 Ingo NEUMANN SJP-4010-455 3483
23117 7590 06/02/2021
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
06/02/2021 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte INGO NEUMANN and ANDREAS FURCHE

Appeal 2021-001566
Application 16/032,740
Technology Center 3600
____________

Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 101 as lacking
patent eligibility. Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from
the Examiner’s decision to reject the 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. Appellant identifies the real party in interest as NASDAQ
TECHNOLOGY AB. Appeal Br. 3.
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STATEMENT OF THE CASE
The Examiner rejected claims 1–5, 7, 9–14, and 16–23 in the Final
Office Action (“Final Act.”) under 35 U.S.C. 101 “because the claimed
invention is directed to a judicial exception (abstract idea) without
significantly more.” Final Act. 2.
There are three independent claims on appeal, claims 1, 10, and 23.
Claim 1 is directed to a method; claim 10 is to an information processing
apparatus that is configured to carry out substantially the same method as
recited in claim 1; claim 23 is to non-transitory computer readable storage
medium storing computer readable code that, when executed, carries out
substantially the same method as recited in claim 1.
Claim 1 is representative. The claim is reproduced below, annotated
with bracketed numbers for reference to the limitations in the claim:
1. A method for displaying a visualization for order
activity, comprising:
at an information processing apparatus having a memory,
a transceiver, and one or more processors:
[1] receiving order data, including one or more order data
messages, from one or more broker devices, and storing the
order data in the memory;
[2] accessing the memory to obtain the order data
associated with the one or more broker devices;
[3] generating graph data, using a graph generator,
including a graph having a time scale along a first axis of the
graph and an order value scale along a second axis of the graph;
[4] adding order objects to the graph data for populating
the graph, wherein:
[4a] each of the order objects is associated with an
order from the order data, and
[4b] each of the order objects represents an event
in a life-cycle of the order with which the respective order
object is associated;
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[4c] the order has an order type selected from a
group that is comprising a bid order type or an ask order type;
and
[4d] the order objects associated with the order
represent events in the life-cycle of the order that include:
[4di] entry of the order;
[4dii] amendment of the order; and
[4diii] deletion of the order,
wherein the life-cycle of the order begins with entry of the
order and concludes with deletion of the order;
[5] adding line data for drawing one or more lines on the
generated graph, wherein the one or more lines connect the
order objects that are associated with a same order from the
order data and represent a path of the order from entry of the
order to deletion of the order; and
[6] transmitting the graph data to at least one client
device, the at least one client device configured to display the
graph with the order objects and drawn one or more lines using
a display device, wherein
[7] upon receiving a selection operation on one of the
connected order objects, the connected order objects that are
associated with the order corresponding to the selected one of
the connected order objects are highlighted on the display of the
client device.
Appeal Br. 28–29 (Claims App.).

PATENT ELIGIBILITY
Principles of Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. v. CLS Bank Int’l, 573
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U.S. 208 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 75–77 (2012).
In the first step, it is determined “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If
it is determined that the claims are directed to an ineligible concept, then the
second step of the two-part analysis is applied in which it is asked “[w]hat
else is there in the claims before us?” Id. (alteration in original) (citation and
quotation marks omitted). The Court explained that this step involves
a search for an “‘inventive concept’”—i.e., an element or
combination of elements that is “sufficient to ensure that the
patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.”
Alice, 573 U.S. at 217–18 (alteration in original) (citing from Mayo, 566
U.S. at 75–77).
Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217
(citation omitted).
The PTO published guidance on the application of 35 U.S.C. § 101,
USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Eligibility
Guidance”) (throughout the decision, we cite to the Federal Register where
the Eligibility Guidance was published). This guidance provides additional
direction on how to implement the two-part analysis of Mayo and Alice.
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Step 2A, Prong One, of the Eligibility Guidance looks at the specific
limitations in the claim to determine whether the claim recites a judicial
exception to patent eligibility. In Step 2A, Prong Two, the claims are
examined to identify whether there are additional elements in the claims that
integrate the exception in a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” Eligibility
Guidance, 84 Fed. Reg. at 54 (Step 2A, Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
Eligibility Guidance instructs us to determine whether there is a claimed
“inventive concept” to ensure that the claims define an invention that is
significantly more than the ineligible concept itself. Eligibility Guidance, 84
Fed. Reg. at 56.
With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.

Discussion
Claim 1 is directed to a “method for displaying a visualization for
order activity.” A method is also a “process,” which is one of the broad
statutory categories of patent-eligible subject matter listed in 35 U.S.C. §
101. Therefore, following the first step of the Mayo/Alice analysis, we find
that the claim is directed to a statutory class of invention. We thus proceed to
Step 2A, Prong One, of the 2019 Eligibility Guidance.

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Step 2A, Prong One
In Step 2A, Prong One, of the Eligibility Guidance, the specific
limitations in the claim are examined to determine whether the claim recites
a judicial exception to patent eligibility, namely, whether the claim recites an
abstract idea, law of nature, or natural phenomenon. Each limitation in the
claim must be examined to determine whether it recites an abstract idea.
Eligibility Guidance, 84 Fed. Reg. at 54.
The Examiner found that the claimed method “covers performance of
the limitations in the mind or via manual human activity (graphing with pen
and paper), but for the recitation of generic computer components.” Final
Act. 3. The Examiner found that although the claim recites that the steps are
performed on “an information processing apparatus,” there is “nothing in the
claim” that precludes “the limitations from practically being performed in
the human mind or by organizing human activity.” Id. Specifically, the
Examiner found that “the claim encompasses the user manually generating a
graph from specific data.” Id. The Examiner concluded the limitations
recited in the claim “belong to the mental processes or organizing human
activity groupings” of the Eligibility Guidance at 84 Fed. Reg. at 52. Final
Act. 3.
We agree with the Examiner’s determination.
The claim is directed a method “for displaying a visualization for
order activity.” The Specification indicates that the orders recited in the
claim refer to the orders in an “exchange” and “trading system” used by
brokers and traders, such as orders for stock on a stock exchange. Spec.
¶¶ 2–4.
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Steps [1] and [2] of claim 1 comprise receiving the order data and
accessing the memory of a broker device to obtain the data. We consider
these steps to be “data-gathering” steps in which information is gathered and
accessed for use in the subsequent steps of the method.
A graph is generated in steps [3]–[5] of the claim using the order data
received and accessed in steps [1] and [2] of the claim. Steps [3]–[5] of the
claim are the steps which the Examiner determined to represent an abstract
idea because a human could perform these graphing steps in the human mind
with the aid of pen and paper.
In step [3], “graph data” is generated including a graph having one
axis with a time scale and another axis with an order value. In simple terms,
we understand this step to encompass labeling a graph paper with one axis
for time and another axis for order value.
In step [4], the actual values are filled in from the data collected and
accessed in steps [1] and [2] of the claim. “Order objects” are added to the
graph in step [4]. The Specification does not provide a definition of “order
object.” However, the Specification shows an “Order Object” in Figure 3 as
a circle or point on a graph. Spec. ¶ 39; Fig. 3. Consequently, we interpret
“order object” to be a pictorial element (e.g., a circle) at a position on a
graph representing the time and value of a specific order. This interpretation
is consistent with the claim which recites [4a] “each of the order objects is
associated with an order from the order data.”
The claim also recites that [4b] “each of the order objects represents
an event in a life-cycle of the order with which the respective order object is
associated.” The “life-cycle” is recited in the claim to include “[4di] entry of
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the order; [4dii] amendment of the order; and [4diii] deletion of the order.”2
In other words, the data from steps [1] and [2] is added to the graph
indicating when the order was entered, when it was amended, and when it
was deleted. A line connecting the order objects is added in step [5] of the
claim which connects the order objects.
As determined by the Examiner, these steps of graphing data could be
done manually by a human using pen and graph paper. Figure 4 of the
Specification illustrating this graph is copied below:

Figure 4, copied above, shows an X-axis labeled with the time of day
on Jul. 20, 2009 (“20 July 2009 (EST)”) and the Y-axis labeled with the
value of an order in “AU$”. The figure shows various order objects on the

2 The Specification does explain what an “amendment” to an order means.
We assume it is a term of art known to one of ordinary skill in the art.
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graph. One specific order is entered on the graph, using large diamond
shapes to show the Entered Bid Order, the Amended Bid Order, and the
Deleted Bid Order, with a line connecting them, illustrating steps [4] and [5]
of the claim. As discussed by the Examiner, these values could be manually
drawn and connected on a graph, therefore representing a mental process
that can be accomplished in the human mind with the aid of paper and pen.
The graph is transmitted in step [6] to a client device which is
configured to display the graph. One of the orders can be selected (e.g., the
order depicted on Fig. 4 with the large diamonds) and highlighted in step [7].
Once again, highlighting can be performed manually, for example, using a
highlighter marker.
Appellant argues that the claim is “directed to more than simply
drawing a graph with pen and paper.” Appeal Br. 17. Appellant states that
the steps in claims [4] and [5] could not “practically” be performed in the
human mind because “the human would not be able to practically do so in a
manner that allows them to easily select and highlight the ‘connected order
objects.’” Id. at 17–18.
This argument is not persuasive. In our view, it is axiomatic that a
human could manually draw a graph, connect the dots, and highlight all of it
or any portion of it. Appellant has not identified any error in this conclusion.
Appellant has not identified anything in the claim that would preclude a
human from doing so, or a specific step in the claim that a human could not
actually perform. While the claim recites that the steps are accomplished
using “information processing apparatus having a memory, a transceiver,
and one or more processors,” “[c]ourts have examined claims that required
the use of a computer and still found that the underlying, patent-ineligible
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invention could be performed via pen and paper or in a person’s mind.”
Versata Development Group, Inc. v. SAP America, Inc., 793 F.3d 1306,
1335 (Fed. Cir. 2015); Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1318 (Fed Cir. 2016) (“Furthermore, with the exception of
generic computer-implemented steps, there is nothing in the claims
themselves that foreclose them from being performed by a human, mentally
or with pen and paper.”).
Appellant further states that a human could not receive and transmit
order data between devices. Appeal Br. 18. However, the Examiner did not
characterize these steps as ones that could be performed mentally.
Because we find that steps [3]–[5] of the claim recite an abstract idea,
we proceed to the next step in the analysis to determine whether the abstract
idea is integrated into a practical application.

Step 2A, Prong Two
Prong Two of Step 2A under the 2019 Eligibility Guidance asks
whether there are additional elements that integrate the exception into a
practical application. We must look at the claim elements individually and
“as an ordered combination” to determine whether the additional elements
integrate the recited abstract idea into a practical application. As explained
in the 2019 Eligibility Guidance, integration may be found when an
additional element “reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field” or
“applies or uses the judicial exception in some other 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
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drafting effort designed to monopolize the exception.” Eligibility Guidance,
84 Fed. Reg. at 55.
Appellant argues that the claim is “directed to an improvement in
‘computer functionality’ and not on ‘economic or other tasks’ for which a
computer is used in its ordinary capacity.” Appeal Br. 15. Specifically,
Appellant contends that “the claimed features are directed to improvements
in visualizations that allow a viewer to easily observe the history of an order
during the lifecycle of the order.” Id. Appellant points to steps [4] and [5] of
the claim comprising adding order objects to the graph and connecting them.
Id. Appellant states that the claimed method “allows for direct visibility for
development of orders over time using a unique and interactive
visualization.” Id. at 16.
Appellant also argues that the abstract idea, if any, is integrated into a
practical application. Appeal Br. 18. As explained in the Eligibility
Guidance, integration of an abstract idea into a practical application can be
found when “[a]n additional element reflects an improvement in the
functioning of a computer, or an improvement to other technology or
technical field.” Eligibility Guidance, 84 Fed. Reg. at 55. As the additional
element, Appellant refers to steps [3]–[5] and [7] of the claim in which the
axes are labeled, objects are entered into the graph, objects are connected by
lines, and then one of the connected order objects is highlighted. Appeal Br.
19.
We are not persuaded by Appellant that the Examiner erred. Appellant
has not identified an “additional element” of the claim which is beyond the
judicial exception. Rather, Appellant is identifying the steps in the claim that
the Examiner found to represent the abstract idea, specifically the steps of
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drawing and highlighting a graph, all of which can be done by a human with
paper, pen, and a colored highlighter.
Appellant asserts that the “claimed display of order object data
provides a specific technological improvement over prior visualization
technology,” but fails to identify a specific improvement that is
accomplished by an additional element in the claim. Appeal Br. 20. We
contrast claim 1 with the patent-eligible claim in Trading Technologies
International, Inc. v. CQG, INC., 675 Fed. Appx. 1001 (Fed. Cir. 2017)
“Trading Technologies I”) cited by Appellant in the brief (Appeal Br. 24).
In Trading Technologies I, the Federal Circuit agreed with the district
court that the disputed claims are patent-eligible because they “require a
specific, structured graphical user interface paired with a prescribed
functionality directly related to the graphical user interface’s structure that is
addressed to and resolves a specifically identified problem in the prior state
of the art.” 675 Fed. Appx. at 1004. For example, the claims in Trading
Technologies I required the dynamic display of certain information and the
following functionality:
in response to a selection of a particular location of the order
entry region by a single action of a user input device, setting a
plurality of parameters for a trade order relating to the
commodity and sending the trade order to the electronic
exchange.
Trading Technologies I, 675 Fed.Appx. at 1003. The claim limitation
therefore involved sending an order to an exchange by a selection on the
order entry region which selection also set a plurality of trade order
parameters.
In contrast, the data displayed on the graph in claim 1 is static and the
only functionality of highlighting the connected order objects in step [7]
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simply automates a task that could be accomplished by a human with no
specific technological means to do so. In contrast, in Trading Technologies
I, a graphical user interface was improved by adding a functionality to it that
enabled parameters to be set for a trade order and the trade order to be sent
to the electronic exchange. The interface therefore was an improvement
because it provided a way that a trader could send orders to the exchange.
The interface was found to “‘solve problems’” of prior graphical user
interfaces in electronic trading and have “no ‘pre-electronic trading
analog.’” Id. at 1004. Here, the graphing and highlighting recited in the
claim have an analog in the pre-electronic world and do not solve a trading
problem. We simply find it unpersuasive that facilitating the graphical
visualization of an order lifecycle on a client device solves a technical
problem when such steps could be performed manually.
Claim 1 in this appeal is more like the claim in the other Trading
Technologies case, Trading Technologies International, Inc. v. IBG LLC,
921 F.3d 1084 (Fed. Cir. 2019) (“Trading Technologies II”). In that case, the
claims were “directed to a financial trading method used by a computer” in
which the claims required “receiving bid and offer information from an
electronic exchange, displaying such information (‘bid indicators’ and ‘offer
indicators’), and sending an order to the electronic exchange based on a user
input.” Id. at 1089. Trading Technologies II argued that the claims addressed
“technical problems in the way prior art GUI tools were constructed and
operated.” Id. The court explained:
The specification states that a successful trader anticipates the
market to gain an advantage, ’999 patent at 1:20–26, but doing
so is difficult because it requires assembling data from various
sources and processing that data effectively, id. at 1:51–54. The
invention solves this problem by displaying trading information
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“in an easy to see and interpret graphical format.” Id. at 2:3–6.
The specification makes clear that the invention simply displays
information that allows a trader to process information more
quickly.
Id. at 1089.
The court concluded that the claimed invention “makes the trader
faster and more efficient, not the computer. This is not a technical solution to
a technical problem.” Id. at 1090.
We see no difference with the claims here and those in Trading
Technologies II. The improvements cited by Appellant are in “visualizations
that allow a viewer to easily observe the history of an order during the
lifecycle of the order” (id. at 15), “allowing a more specific order life-cycle
to be emphasized in the visualization (id. at 16), and helping users visualize
order lifecycles (id. at 20). However, these so-called improvements and
advantages do not improve computer function, or even trading function, but
just automate the process of visualizing data on a graph.
Appellant asserts the visualization is “interactive.” Appeal Br. 9, 16,
19, 20, 22, 23. See also Spec. ¶¶ 7, 20, 29, 37. The only interaction we
discern in the claim is that the user provides order data in step [1] and selects
connected objects to highlight in step [7]. The claim does not recite how
these steps are accomplished, only that data is received and “upon receiving
a selection operation.” The steps do not provide an improvement to either
trading technology, visualization, or highlighting a selected order life cycle.
The “interactions” are simply how data is provided and how selections are
made in a computing environment. The claimed steps are nothing more than
the necessary steps to perform the abstract idea of visualizing the life-cycle
of an exchange order. See BOOM! PAYMENTS, Inc. v. Stripe, Inc., 839 Fed.
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Appx. 528, 532–533 (Fed. Cir. 2021) (“[W]e agree with Stripe that these
steps only explicate the necessary steps of an escrow arrangement and do not
change the direction of the claims. Accordingly, we conclude that the claims
are directed to an abstract idea at step one.”)
Because we find that the abstract idea is not integrated into a practical
application under Step 2, Prong Two, we proceed to Step 2B of the analysis.

Step 2B
Step 2B of the Eligibility Guidance asks whether there is an inventive
concept. In making this Step 2B determination, we must consider whether
there are specific limitations or elements recited in the claim “that are not
well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present” or whether the claim
“simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception, which is indicative that an inventive concept may not be present.”
Eligibility Guidance, 84 Fed. Reg. at 56 (footnote omitted). It also must be
considered whether the combination of steps operated in an unconventional
way, even when the step when considered alone does not. Id.
As discussed above, the limitations relied upon by Appellant are part
of the abstract idea. There is nothing in this record that establishes that the
additional elements recited in the claim beyond the judicial exception, such
as the “information processing apparatus having a memory, a transceiver,
and one or more processors,” perform any differently than generic and
conventional computing components.
The steps in the claim involving receiving data and accessing memory
as recited in steps [1] and [2] of the claim are not recited with any
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particularity, that in combination with the other steps in the claim, are
inventive and unconventional. In reaching this determination, we emphasize
that the steps in the claim are recited in a “result-oriented way” in which the
result is recited, but not how it is accomplished. There is no specific
mechanism recited in the claim that dictates how to achieve the result of
generating graph data, adding order objects to the graph, adding line data,
etc., that provides an unconventional and inventive step to the claim. As
explained Dropbox, Inc. v. Synchronoss Technologies, Inc., 815 Fed. Appx.
529, 533 (Fed. Cir. 2020)
The patent has to describe how to solve the problem in a manner
that encompasses something more than the “principle in the
abstract.” See [ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d
759, 769 (Fed. Cir. 2019)] (explaining that an invention may not
be patent eligible if the “claims ‘were drafted in such a result-
oriented way that they amounted to encompassing the ‘principle
in the abstract’ no matter how implemented’” (quoting Interval
Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1343 (Fed. Cir.
2018))).
While it may be more efficient and accurate to use a computer to
insert information, automating a task on a computer that a human can
perform does not confer eligibility on a claim. See Credit Acceptance Corp.
v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“mere automation
of manual processes using generic computers does not constitute a
patentable improvement in computer technology.”).
For the foregoing reasons, we affirm the rejection of claim 1 as
lacking patent eligibility. Independent claims 10 and 23 recite substantially
the same limitations. The rejection of these claims is affirmed for the same
reasons. Claims 2–5, 7, 9, 11–14, and 16–22 were not argued separately and
fall with the independent claims. 37 C.F.R. § 41.37(c)(iv)(1).
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–5, 7, 9–
14, 16–23
101 Eligibility 1–5, 7, 9–
14, 16–23

TIME PERIOD
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