Uman, Julie et al.

Patent Trials and Appeals Board

Jul 1, 2020

12760763 - (D) (P.T.A.B. Jul. 1, 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.
12/760,763 04/15/2010 Howard W. LUTNICK 07-2126-C1 9712
63710 7590 07/01/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
MILEF, ELDA G
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
07/01/2020 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
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 HOWARD W. LUTNICK, JOSEPH NOVIELLO,
JONATHAN UMAN, and FREDERICK VARACCHI
____________

Appeal 2020-001441
Application 12/760,763
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
BRADLEY B. BAYAT, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 41–60, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as BGC Partners, Inc.
Appeal Br. 3.
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STATEMENT OF THE CASE
Claimed Invention
Appellant’s disclosure relates “to a vertical market in which
incentives to generate revenue are provided to those members of the market
that enter into an agreement to exchange goods and services directly
between each other.” Spec. ¶ 2.
Claims 41, 59, and 60 are the independent claims on appeal.
Claim 41, reproduced below with added bracketed notations, is illustrative
of the claimed subject matter.
41. A method of communication over a communication
network between an ownership processor and a trading
processor and an interface of a workstation of a participant for
communication with an electronic exchange, the method
comprising:
[(a)] receiving, via the trading processor, a request from
an input interface of a workstation of a participant to trade
goods and services on an electronic exchange, in which the
electronic exchange comprises a market where tradable
commodities are sold and bought, in which the participant is
using the workstation that is in electronic communication with
the trading processor over the communication network;
[(b)] issuing, via the ownership processor, at least one
warrant to a participant based on an agreement, in which the
warrant is convertible into shares in the electronic exchange;
[(c)] monitoring, via the ownership processor, the
participant’s performance on the marketplace over a period of
time;
[(d)] receiving, via the ownership processor, a request to
convert a portion of the plurality of warrants;
[(e)] determining, via the ownership processor, based on
the participant’s performance, a quantity of warrants to be
converted into shares;
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[(f)] determining, via the trading processor, a type of
transaction is associated with an information service
transaction, transmitting to an interface of a workstation of a
participant, a notification to indicate that a participant that
provides the information service is entitled to information
service revenues;
[(g)] determining, via the trading processor, a type of
transaction is associated with a voice service transaction and the
voice service transaction is in a first annual period of
agreement, transmitting to an interface of a workstation of a
participant, a notification to indicate that a participant that
provides electronic service is entitled to a fee of voice
transaction revenue that is net of voice transaction service
provider’s cost for salaries, bonuses and benefits;
[(h)] determining, via the trading processor, a type of
transaction is associated with a voice service transaction and the
voice service transaction is not in a first annual period of
agreement, transmitting to an interface of a workstation of a
participant, a notification to indicate that a participant that
provides electronic service is entitled to a fee of voice
transaction revenue; and
[(i)] determining, via the trading processor, a type of
transaction is associated with an electronic service transaction,
transmitting to an interface of a workstation of a participant, a
notification to indicate that a participant that provides the
electronic service transaction is entitled to electronic
transaction revenue less a fee for providing clearance,
settlement and fulfillment services, wherein communication
with the ownership processor occurs over a first delivery path
and communication with the trading processor occurs over a
second delivery path, wherein the first delivery path is different
than the second delivery path.

Appeal Br. 19–20, Claims App. (emphasis added).

Rejections
Claims 41–60 are rejected under 35 U.S.C. § 101 because the claimed
invention recites an abstract idea without significantly more. Final Act. 2–5.
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Claims 41–60 are rejected under pre-AIA 35 U.S.C. § 102(a) as being
anticipated by Lutnick (US 2003/0040961 A1, published Feb. 27, 2003). Id.
at 5–10.

ANALYSIS
35 U.S.C. § 101
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.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step
in that analysis is to “determine whether the claims at issue are directed to
one of those patent-ineligible concepts.” Id. If the claims are not directed to
a patent-ineligible concept, e.g., an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step where the elements of the
claims are considered “individually and ‘as an ordered combination’” to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S.
at 79, 78). This is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
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practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined claims 41–60 “allow[] for a vertical market where members
participate in an agreement to trade directly with each other thereby saving
potential revenue due to transaction costs, taxes and fees which is a
fundamental economic practice.” Final Act. 3. The Examiner also
determined the claims do “not include additional elements that are sufficient
to amount to significantly more than the judicial exception. . . . [T]he
additional elements . . . perform[ing] generic computer functions . . .
amounts to no more than merely linking the use of the judicial exception to a
particular technological environment or field of use.” Id. at 4–5.
Appellant argues independent claims 1, 59, and 60 as a group. Appeal
Br. 9–15. Pursuant to 37 C.F.R. § 42.37(c)(1)(iv), we select claim 41 as
representative for the group; thus, claims 59 and 60 stand or fall with claim
41.
Step One of the Alice Framework (2019 Revised Guidance, Step 2A)2
The first step in the Alice framework is to determine whether the
claims at issue are “directed to” a patent-ineligible concept, e.g., an abstract

2 The U.S. Patent and Trademark Office (the “USPTO”) published revised
guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised
Guidance”). That guidance revised the USPTO’s examination procedure
with respect to the first step of the Alice framework by (1) “[p]roviding
groupings of subject matter that [are] considered an abstract idea”; and (2)
clarifying that a claim is not “directed to” a judicial exception if the judicial
exception is integrated into a practical application of that exception. Id. at
50.
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idea. Alice Corp., 573 U.S. at 217. This first step, as set forth in the 2019
Revised Guidance (i.e., Step 2A), is a two-prong test; in Step 2A, Prong 1,
we look to whether the claim recites a judicial exception, e.g., one of the
following three groupings of abstract ideas: (1) mathematical concepts; (2)
certain methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next
consider whether the claim includes additional elements, beyond the judicial
exception, that “integrate the [judicial] exception into a practical
application,” i.e., that apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception (“Step 2A, Prong 2”). Id. at 54–55. Only if the claim (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application do we conclude that the claim is “directed to” the judicial
exception, e.g., an abstract idea.
We are not persuaded that the Examiner erred in concluding that
claim 41 is directed to an abstract idea. The Federal Circuit has explained
that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered
in light of the specification, based on whether ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). We ask
whether the focus of the claims is on a specific improvement in relevant
technology or on a process that itself qualifies as an “abstract idea” for
which computers are invoked merely as a tool. See id. at 1335–36. Here, it
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is clear from the Specification (including the claim language) that claim 41’s
focus is on an abstract idea, and not on any improvement to technology
and/or a technical field.
Appellant’s Specification is entitled “METHODS, APPARATUSES
AND ARTICLE OF MANUFACTURES FOR INCENTIVIZING
PARTICIPANTS TO TRADE ON A MARKETPLACE,” and relates “to a
vertical market in which incentives to generate revenue are provided to those
members of the market that enter into an agreement to exchange goods and
services directly between each other.” Spec. ¶ 2. The Specification in the
Abstract section describes the invention as:
A method, apparatus, and article of manufacture for
incentivizing a plurality of participants to exchange goods or
services on a marketplace. In one embodiment, at least one
warrant is issued a participant who trades on the marketplace.
The warrant is issued in accordance to an agreement among the
plurality of participants. The warrant provides the participant
with a right for converting the warrant into at least one
ownership share of the marketplace. The right is conditioned on
the participant’s performance on the marketplace.
The claimed invention incentivizes participants to exchange goods and
services on its marketplace by agreeing to trade directly with members of the
marketplace in exchange for warrants or rewards, and determines the
quantity of warrants to be converted to ownership shares based on the
participant’s performance on the marketplace. In other words, participants
are incentivized to generate revenue because “[p]ortions of the revenues
generated by all of the participants of the agreement may be paid to the
participants based on percent-ownership of the market.” Spec. ¶ 7.
To that end, claim 41 recites a method of communication comprising:
(a) receiving a request from a participant to trade goods and services on an
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exchange; (b) issuing at least one warrant to a participant based on an
agreement; (c) monitoring the participant’s performance on the marketplace
over a period of time; (d) receiving a request to convert a portion of the
warrants; (e) determining a quantity of warrants to be converted into shares;
(f) determining a type of transaction is associated with an information
service transaction; (g) determining a type of transaction is associated with a
voice service transaction and the voice service transaction is in a first annual
period of agreement; (h) determining a type of transaction is associated with
a voice service transaction and the voice service transaction is not in a first
annual period of agreement; and (i) determining a type of transaction is
associated with an service transaction. See Claim 1 supra.
Under the broadest reasonable interpretation, the above recitations of
steps (a)–(i) describe a method of organizing human activity identified under
the 2019 Revised Guidance as commercial or legal interactions, which
include agreements in the form of contracts. 2019 Revised Guidance,
84 Fed. Reg. at 52. These steps describe a marketplace receiving a request
from a participant to trade goods and services on its exchange (step (a)), and
based on an agreement or contract with the participant to exchange goods or
services of a vertical market, at least one warrant is issued to the participant
(step (b)), the participant’s performance on the marketplace is monitored
over a period of time (step (c)), and upon receiving a request to convert a
portion of the warrants (step (d)), a quantity of warrants to be converted into
shares is determined based on the participant’s performance (step (e)). See
Spec. ¶¶ 21–24.
Steps (f)–(i) are actions taken to determine if a type of transaction is
associated with: “an information service transaction” (step (f)), “a voice
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service transaction” in a first annual period of the agreement (step (g)), “a
voice service transaction” not in the first annual period (step (h)), and “an
electronic service transaction” (step (i)). These steps can be practically
performed in the human mind by determining and comparing the type of
transaction to the participant’s entitlements under the agreement for each
transaction. Such mental processes have been determined to be an abstract
idea. See 2019 Revised Guidance 84 Fed. Reg. at 52 (“Mental processes—
concepts performed in the human mind (including an observation,
evaluation, judgment, opinion.”). Notably, each of these steps is performed
to notify if the participant is entitled to any revenues or fees under the
agreement.
Accordingly, we conclude those portions of steps (a)–(i) recite an
abstract idea. Having concluded that claim 41 recites a judicial exception,
i.e., an abstract idea (Step 2A, Prong 1), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong 2). 2019 Revised Guidance,
84 Fed. Reg. at 51. When a claim recites a judicial exception and fails to
integrate the exception into a practical application, the claim is “directed to”
the judicial exception. Id. at 55.
The additional elements recited in claim 41, beyond the abstract idea,
are an “ownership processor, a trading processor, an interface of a
workstation, and a memory,” which the Examiner finds (Final Act. 4) are
disclosed in the Specification at a high degree of generality, i.e., as generic
computer components (see, e.g., Spec. ¶¶ 19–23). For example, the
Specification indicates that such components include:
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An illustrative electronic trading system 100 of an
incentive-based vertical market in accordance with the present
invention is shown in FIG. 1. Illustrative trading system 100 may
include an ownership processor 102, a trading processor 104, and
several workstations 106. Electronic trading system 100 may
include any hardware, software, network infrastructure, or any
other suitable components that may be used to effect transactions
on or through the vertical market.

Workstations 106 may be used to effect transaction on or
through the vertical market. Workstations 106 may be
implemented on any suitable hardware. Suitable hardware may
include personal computers, servers, or any other suitable
hardware that includes a processor. Workstations 106 may be
used by the participants of the agreement. For example, the
workstation 106 labeled workstation A may be used by
participant A. The workstation 106 labeled workstation B may
be used by participant B. Although market 100 is shown with six
workstations 106, it is to be understood that market 100 may
include any suitable number of workstations 106.

The participants of the agreement may individually use
workstations 106 to exchange and purchase goods and services.
Transactions between participants may run on workstations 106
and may be handled by trading processor 104. Trading processor
104 may include any suitable processor to process any suitable
transaction. Trading processor 104 may be implemented on any
suitable hardware such as a computer.

Ownership processor 102 may be any suitable equipment
or device capable of tracking revenues, commissions, profits,
dates, etc. Ownership processor 102 may be capable of
determining a reward each participant of the agreement receives
when certain events occur or thresholds are achieved. For
example, ownership processor 102 may determine how many
warrants each participant of the agreement can convert at a
predetermined conversion rate when, for example, a threshold is
achieved.

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As shown in FIG. 1, information may be communicated
between trading processor 104 and workstations 106 via
communications paths 112. Paths 112 may be any suitable
communications paths. Paths 112 may be, for example, wired or
wireless paths, and may be part of a communications network.
As also shown in FIG. 1, ownership information may be
communicated between ownership processor 102 and
workstation 104 via delivery paths 114. Delivery paths 114 may
be any suitable communications paths. Delivery paths 114 may
be, for example, wired or wireless paths, and may be part of a
communications network.
Spec. ¶¶ 19–23. These additional elements (italicized in claim 41 supra) do
no more than generally link the use of the abstract idea to a particular
technological environment or field of use. See Spec. ¶ 23 (describing the
“information may be communicated between trading processor 104 and
workstations 106 via communications paths 112. Paths 112 may be any
suitable communications paths. Paths 112 may be, for example, wired or
wireless paths, and may be part of a communications network. As also
shown in FIG. 1, ownership information may be communicated between
ownership processor 102 and workstation 104 via delivery paths 114.”).
We find no indication in the Specification that the operations recited
in claim 41 invoke any assertedly inventive programming, require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, or that the claimed invention is implemented using
anything other than generic computer components to perform generic
computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
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As such, we disagree with Appellant’s contention that “the claimed
subject matter is directed to improvements in electronic exchanges . . .
where[in] communication with a trading processor and a[n] ownership
processor is over two different delivery paths over a network which may
help reduce the amount of transaction or communications over the network.”
Appeal Br. 11–12 (emphasis omitted) (citing Spec. ¶¶ 21–22, 47).
Appellant’s Specification, reproduced supra, discloses that these delivery
paths “may be any suitable communications paths,” such as wired or
wireless paths part of a communications network (Spec. ¶ 23), which
generally links the abstract idea to a technological environment––e.g., a
claim describing how the abstract idea of hedging could be used in the
commodities and energy markets, as discussed in Bilski v. Kappos, 561 U.S.
593, 595 (2010).
Appellant draws an analogy between the pending claims and those at
issue in Core Wireless Licensing S.A.R.L. v LG Electronics, Inc., 880 F.3d
1356 (Fed. Cir. 2018). Appeal Br. 14. However, we can find no parallel
between claim 41 and the claims at issue in Core Wireless. To the extent
there is an improvement in claim 41, the improvement is to the abstract idea,
and this improvement is implemented with conventional computer
equipment and processing. Although Core Wireless is “directed to a
particular manner of summarizing and presenting information in electronic
devices,” resulting in an improved user interface, claim 41 does not recite an
improved user interface. See Core Wireless, 880 F.3d at 1362. There, the
court stated:
Claim 1 of the ‘476 patent requires “an application summary that
can be reached directly from the menu,” specifying a particular
manner by which the summary window must be accessed. The
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claim further requires the application summary window list a
limited set of data, “each of the data in the list being selectable
to launch the respective application and enable the selected data
to be seen within the respective application.” This claim
limitation restrains the type of data that can be displayed in the
summary window. Finally, the claim recites that the summary
window “is displayed while the one or more applications are in
an un-launched state,” a requirement that the device applications
exist in a particular state. These limitations disclose a specific
manner of displaying a limited set of information to the user,
rather than using conventional user interface methods to display
a generic index on a computer. Like the improved systems
claimed in Enfish, Thales, Visual Memory, and Finjan, these
claims recite a specific improvement over prior systems,
resulting in an improved user interface for electronic devices.

Id. at 1362–63. In contrast, in Appellant’s claim 41, the recited interface is
used as a mere tool. Appellant’s argument is not commensurate with the
scope of the claim when viewed in light of the Specification, because
besides using a generic workstation interface as a tool in its ordinary
capacity (see Spec., Fig. 1) to display information, Appellant has not shown
that the claimed invention reflects an improved user interface.
As discussed, after each determining step (f)–(i) is performed, a
notification is transmitted to the “interface of a workstation of a participant”
providing information about fees/revenues under the agreement. The
recitation of transmitting a notification to the interface of a workstation of a
participant to provide information to the participant is insignificant extra-
solution activity because its incidental to the primary process of claim 41.
See MPEP § 2106.05 (g) (“An example of post-solution activity is an
element that is not integrated into the claim as a whole, e.g., a printer that is
used to output a report of fraudulent transactions, which is recited in a claim
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to a computer programmed to analyze and manipulate information about
credit card transactions in order to detect whether the transactions were
fraudulent.”).
We are not persuaded that the claimed invention, as recited in claim
41, achieves a comparable improved technological result. To the contrary,
as described above, the claimed invention, when considered as a whole in
light of the Specification, clearly appears to be focused on achieving a
business and economic objective, i.e., fulfilling the terms of a contractual
agreement that issues incentives in the form of warrants that can be
converted to ownership shares and determining transaction fees/revenues for
services provided.
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in computer technology and/or functionality to the claimed
invention or that otherwise indicates that the claimed invention integrates the
abstract idea into a “practical application,” as that phrase is used in the
2019 Revised Guidance.3 Accordingly, we agree with the Examiner that
claim 41 is directed to an abstract idea.

3 The 2019 Revised Guidance references MPEP §§ 2106.05(a)–(c) and (e)
in describing the considerations that are indicative that an additional element
or combination of elements integrates the judicial exception, e.g., the
abstract idea, into a practical application. 2019 Revised Guidance, 84 Fed.
Reg. at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
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Step Two of the Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Alice framework that claim
41 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Alice framework, whether
claim 41 includes additional elements or a combination of elements that
provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56.
Besides the recited judicial exception, the additional elements are
itlicized in claim 41, which include ownership processor, trading processor,
electronic exchange, and an interface of a workstation. The ownership
processor, trading processor, and interface, as the Examiner finds (Final Act.
4), are disclosed in the Specification at a high degree of generality, i.e., as
generic computer components used to perform generic computer functions
(see, e.g., Spec. ¶¶ 19–23). The transmitting of information to a workstation
interface as discussed above is is well-understood, routine, or conventional
activity because any generic computer workstation is capable of displaying
information. The term “electronic exchange” and the recited communication
paths amount to merely indicating a field of use or technological
environment in which to apply a judicial exception, which does not amount
to significantly more than the exception itself. Diamond v. Diehr, 450 U.S.
175, 192 n.14 (1981) (A judicial exception cannot be made eligible “simply
by having the applicant acquiesce to limiting the reach of the patent for the
formula to a particular technological use.”); see also Affinity Labs of Tex.,
LLC v. DIRECTV, LLC, 838 F.3d 1253 (Fed. Cir. 2016).
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Appellant argues that “the claimed invention, in one example, recites
an additional element (or combination of elements) that are ‘not well-
understood, routine or conventional’ for electronic exchanges including a
trading processor for processing transactions to determine entitlement based
on the transaction type extracted from the transaction and transmitting a
notification to an interface of a workstation wherein communication with the
ownership processor occurs over a first delivery path and communication
with the trading processor occurs over a second delivery path.” Appeal Br.
13 (emphasis omitted).
We are not persuaded by Appellant’s argument because “the relevant
inquiry is not whether the claimed invention as a whole is unconventional or
non-routine.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290
(Fed. Cir. 2018). And, a claim does not gain subject matter eligibility solely
because it is narrowed or limited to Appellant’s alleged improvement over
existing processes. See, e.g., Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1321 (Fed. Cir. 2016) (“A narrow claim directed to an
abstract idea, however, is not necessarily patent-eligible.”). The question is
whether the claim includes additional elements, i.e., elements other than the
abstract idea itself, that “‘transform the nature of the claim’ into a patent-
eligible application.” Alice Corp., 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78).
The only claimed computer elements beyond the abstract idea, as
discussed above, do not amount to an inventive concept because a generic
computer used to perform generic computer functions in a known
technological environment is well-understood, routine, or conventional—a
determination fully consistent with the Specification (see Spec. ¶¶ 19–23).
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These additional elements, individually and in combination, do not provide
an inventive concept.
Contrary to Appellant’s contention in reference to Berkheimer
(Appeal Br. 13), the Federal Circuit, in accordance with Alice, has
“repeatedly recognized the absence of a genuine dispute as to eligibility”
where claims have been defended as involving an inventive concept based
“merely on the idea of using existing computers or the Internet to carry out
conventional processes, with no alteration of computer functionality.”
Berkheimer v. HP Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech, 899 F.3d at 1291 (“BSG Tech does not
argue that other, non-abstract features of the claimed inventions, alone or in
combination, are not well-understood, routine and conventional database
structures and activities. Accordingly, the district court did not err in
determining that the asserted claims lack an inventive concept.”). We are
not persuaded of error in the Examiner’s determination that the claims are
directed to a judicial exception without significantly more.
Accordingly, we sustain the rejection of independent claim 41 under
35 U.S.C. § 101, including independent claims 59 and 60, which fall with
claim 41. We also sustain the rejection of dependent claims 42–58 for the
same reasons, which are argued based on their dependency from claim 41.
See Appeal Br. 9.

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35 U.S.C. § 102(a)
In contesting the Examiner’s rejection of claims 41–60 as being
anticipated by Lutnick, Appellant asserts:
Appellant respectfully disagrees with the rejection of
claims 41-60. As explained above, independent claim 41 (and
independent claims 59 and 60) recite subject matter including
transmitting notifications to interfaces of workstations of
participants using a trading processor wherein communication
with the ownership processor occurs over a first delivery path
and communication with the trading processor occurs over a
second delivery path.
Appeal Br. 16. Appellant presents nothing further to contest the Examiner’s
findings in Lutnick.
The Examiner responds that this “argument is not persuasive because
it is a mere assertion and the argument does not describe what is deficient in
the office action.” Ans. 7–8. Nevetheless, the Examiner reiterates that
the Lutnick reference discloses “As shown in FIG. 1,
information may be communicated between trading processor
104 and workstations 106 via communications paths 112….As
shown in FIG. 1, ownership information may be communicated
between ownership processor 102 and workstation 104 via
delivery paths 114. Delivery paths 114 may be any suitable
communications paths.”-see Lutnick ¶[0024] and Fig. 1.
Ans. 8.
Appellant fails to respond in the Reply Brief.
As such, Appellant has failed to dispute the Examiner’s findings by
pointing out specific errors or distinctions over Lutnick. And, we decline to
examine the claims sua sponte, looking for distinctions over the prior art.
Cf. In re Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is
not the function of this court to examine the claims in greater detail than
Appeal 2020-001441
Application 12/760,763

19
argued by an appellant, looking for [patentable] distinctions over the prior
art.”). In the absence of a more detailed explanation, we are not persuaded
of error on the part of the Examiner. See In re Jung, 637 F.3d. 1356, 1365
(Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an
applicant to identify the alleged error in the examiner’s rejections,” (citing
Ex Parte Frye, 94 USPQ2d at 1072) (“The panel then reviews the
obviousness rejection for error based upon the issues identified by appellant,
and in light of the arguments and evidence produced thereon.”)).
Accordingly, we sustain the rejection of claims 41–60 as
anticipated by Lutnick.
CONCLUSION
The rejections of claims 41–60 under 35 U.S.C. § 101 and § 102(a)
are AFFIRMED.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
41–60 101 Eligibility 41–60
41–60 102(a) Lutnick 41–60
Overall
Outcome
41–60
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