BGC PARTNERS, INC.

Patent Trials and Appeals Board

Sep 3, 2021

2021001501 (P.T.A.B. Sep. 3, 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.
16/255,728 01/23/2019 Howard W. Lutnick 05-1116-C1 6946
63710 7590 09/03/2021
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
09/03/2021 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):
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 HOWARD W. LUTNICK,
MICHAEL SWEETING,
and JOSEPH NOVIELLO
____________

Appeal 2021-001501
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Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
Howard W. Lutnick, Michael Sweeting, and Joseph Noviello
(Appellant2) seeks review under 35 U.S.C. § 134 of a final rejection of
claims 2–12, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented a set of rules that govern the implementation
of market orders in electronic trading systems. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 2, which is reproduced below (bracketed matter and some
paragraphing added).
2. A method comprising:
[1] setting,
by a processor of an electronic trading server,
a price stability threshold
before receipt of a market order to buy or sell an
item at a current market price in an electronic
market
comprising a network of computers
communicatively coupled with one another
and the electronic trading server over a
communication network;

1 Our decision will make reference to the Appellant’s Appeal Brief (“Appeal
Br.,” filed August 13, 2020) and Reply Brief (“Reply Br.,” filed December
28, 2020), and the Examiner’s Answer (“Ans.,” mailed October 30, 2020),
and Final Action (“Final Act.,” mailed February 21, 2020).
2 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 BGC
Partners, Inc. (Appeal Br. 3).

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[2] transmitting,
by the processor, over the communication network,
a graphical user interface
to display at given displays respectively of given
computers of the network of computers;
[3] receiving,
by the processor, over the communication network,
from a first computer of the network of computers,
the market order
entered at a first graphical user interface displayed
at a first display of the first computer;
[4] receiving,
by the processor,
over the communication network from a remote
computing device,
in real time
current market price information;
and
[5] automatically in response to receiving the market order, in
real time:
[5.1] determining,
by the processor,
a stability of the current market price of the item as
the item is being bought and sold throughout the
network of computers,
based on current market price information;
[5.2] determining,
by the processor,
whether the stability of the current market price
meets the stability price stability threshold;
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[5.3.1] when the stability of the current market price is
determined to not meet the price stability threshold,
modifying,
by the processor,
the market order,
based on a system defined modification,
to be a resting order
with a modified price that is a certain price
difference away from the current market
price for the item
and placing,
by the processor,
the resting order
in the electronic market at the modified price;
and
[5.3.2] when the stability of the current market price is
determined to meet the price stability threshold,
causing,
by the processor,
immediate execution of the market order
in the electronic market
against a given opposite-side order
at a current market price of opposite-side
orders.

Claims 2–12 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.

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ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.

ANALYSIS
STEP 13
Claim 2, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of those
patent-ineligible concepts. If so, we then ask, “[w]hat else is
there in the claims before us? To answer that question, . . .
consider the elements of each claim both individually and “as an
ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as 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.”

3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
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Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if the claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “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.” Revised Guidance, 84 Fed. Reg. at
54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 2 recites setting price stability threshold data, transmitting a graphical
user interface, receiving market order and market information data,
determining stability of data, and either modifying or causing execution of
order data. Setting data is modifying and storing data. Determining data
stability is rudimentary analysis. Causing execution of order data is
transmitting order data to somewhere that will react to it. Thus, claim 2
recites modifying, storing, transmitting, receiving, and analyzing data. None
of the limitations recites technological implementation details for any of
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these steps, but instead recite only results desired by any and all possible
means.
From this we see that claim 2 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes6. Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 2 recites the concept of
financial market trading. Specifically, claim 2 recites operations that would
ordinarily take place in advising one to execute or modify an order
depending on price stability. The advice to execute or modify an order
depending on price stability involves determining a stability of the current
market price, which is an economic act, and executing a financial security
order, which is an act ordinarily performed in the stream of commerce. For

4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219–20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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example, claim 2 recites “determining . . . a stability of the current market
price,” which is an activity that would take place whenever one is trading
securities based on price stability. Similarly, claim 2 recites “causing . . .
immediate execution of the market order,” which is also characteristic of
financial order trading.
The Examiner determines the claims to be directed to trading market
orders. Final Act. 2. The preamble to claim 2 does not recite what it is to
achieve, but the steps in claim 2 result in financial market trading by
executing or modifying an order depending on price stability absent any
technological mechanism other than a conventional computer for doing so.
As to the specific limitations, limitations 3 and 4 recite receiving data.
Limitations 1, 2, and 5 recite generic and conventional modifying, storing,
transmitting, and analyzing of financial security order data, which advise
one to apply generic functions to get to these results. The limitations thus
recite advice for executing or modifying an order depending on price
stability. To advocate executing or modifying an order depending on price
stability is conceptual advice for results desired and not technological
operations.
The Specification at paragraph 1 describes the invention as relating to
a set of rules that governs the implementation of market orders in electronic
trading systems. Thus, all this intrinsic evidence shows that claim 2 recites
financial market trading. This is consistent with the Examiner’s
determination.
This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because trading financial
securities is a fundamental commercial practice. The concept of financial
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market trading by executing or modifying an order depending on price
stability is one idea for timing trades. The steps recited in claim 2 are part of
how this might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. See Bilski above.
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of modifying, storing,
transmitting, receiving, and analyzing data mimic human thought processes
of observation, evaluation, judgment, and opinion, perhaps with paper and
pencil, where the data interpretation is perceptible only in the human mind.
See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94
(Fed. Cir. 2016). Claim 2, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data modification,
storage, reception, transmission, and analysis and does not recite an
improvement to a particular computer technology. See, e.g., McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016)
(finding claims not abstract because they “focused on a specific asserted
improvement in computer animation”). As such, claim 2 recites modifying,
storing, transmitting, receiving, and analyzing data, and not a technological
implementation or application of that idea.
From this we conclude that at least to this degree, claim 2 recites
financial market trading by executing or modifying an order depending on
price stability, which is a commercial and legal interaction, one of certain
methods of organizing human activity identified in the Revised Guidance,
and, thus, an abstract idea.
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STEP 2A Prong 2
The next issue is whether claim 2 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application.7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, “all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas.” Thus, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept. “[A]pplication[s]” of such
concepts “ ‘to a new and useful end,’ ” we have said, remain
eligible for patent protection. Accordingly, in applying the § 101
exception, we must distinguish between patents that claim the “
‘buildin[g] block[s]’ ” of human ingenuity and those that
integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 3 and 4 are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Steps 1
and 2 recite basic conventional data operations such as generating, updating,
and storing data. Simply reciting that step 2 transmits a graphical user
interface is no more than saying it transmits a conventional web page or
other form of data defined screen layout. The step remains no more than
data transmission. Step 5 recites generic computer processing expressed in
terms of results desired by any and all possible means and so present no

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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more than conceptual advice. All purported inventive aspects reside in how
the data is interpreted and the results desired, and not in how the process
physically enforces such a data interpretation or in how the processing
technologically achieves those results.
Viewed as a whole, Appellant’s claim 2 simply recites the concept of
financial market trading by executing or modifying an order depending on
price stability as performed by a generic computer. This is no more than
conceptual advice on the parameters for this concept and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
Claim 2 does not, for example, purport to improve the functioning of
the computer itself. Nor does it affect an improvement in any other
technology or technical field. The 10 pages of specification do not bulge
with disclosure, but only spell out different generic equipment8 and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of financial
market trading by executing or modifying an order depending on price
stability under different scenarios. They do not describe any particular
improvement in the manner a computer functions. Instead, claim 2 at issue
amounts to nothing significantly more than an instruction to apply financial
market trading by executing or modifying an order depending on price

8 The Specification describes a server, processor, computer, or data
processing device or combination of the same and personal computers,
laptop computers, mainframe computers, dumb terminals, data displays,
Internet browsers, Personal Digital Assistants (PDAs), two-way pagers,
wireless terminals, portable telephones, programmed computers having
memory. Spec. paras. 23 and 25.
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stability using some unspecified, generic computer. Under our precedents,
that is not enough to transform an abstract idea into a patent-eligible
invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflects an improvement in the functioning of
a computer, or an improvement to other technology or technical field,
applies or uses a judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition, implements a judicial
exception with, or uses a judicial exception in conjunction with, a particular
machine or manufacture that is integral to the claim, effects a transformation
or reduction of a particular article to a different state or thing, 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 drafting effort
designed to monopolize the exception.
We conclude that claim 2 is directed to achieving the result of
financial market trading by advising one to execute or modify an order
depending on price stability, as distinguished from a technological
improvement for achieving or applying that result. This amounts to
commercial or legal interactions, which fall within certain methods of
organizing human activity that constitute abstract ideas. The claim does not
integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 2 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
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The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional feature[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for modifying, storing, transmitting, receiving, and analyzing data
amounts to electronic data query and retrieval—one of the most basic
functions of a computer. All of these computer functions are generic,
routine, conventional computer activities that are performed only for their
conventional uses. See Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016). See also In re Katz Interactive Call Processing
Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible
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narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . .
. those functions can be achieved by any general purpose computer without
special programming”). None of these activities is used in some
unconventional manner nor does any produce some unexpected result.
Appellant does not contend it invented any of these activities. In short, each
step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 2 add nothing that is not already present when the steps
are considered separately. The sequence of data modification-storage-
reception-transmission-analysis is equally generic and conventional. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(sequence of data retrieval, analysis, modification, generation, display, and
transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
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We conclude that claim 2 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 2 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic computer
components configured to implement the same idea. This Court
has long “warn[ed] ... against” interpreting § 101“in ways that
make patent eligibility ‘depend simply on the draftsman’s art.’
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of financial market trading by advising one to execute or
modify an order depending on price stability, without significantly more.
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APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 2–9 and Answer 3–7 and
reach similar legal conclusions. As no further arguments are presented in
the Reply Brief, we note in particular the following.

We are not persuaded by Appellant's argument that the “claimed
features, thus, allow a computer to perform a function not previously
performable by a computer and are implemented using a particular
machine.” Appeal Br. 9, (emphasis omitted). Novelty does not confer
eligibility. “A claim for a new abstract idea is still an abstract idea. The
search for a § 101 inventive concept is thus distinct from demonstrating §
102 novelty.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016). The Specification does not describe a particular
machine, instead identifying several generic machine alternatives. See
footnote 8 above.
We are not persuaded by Appellant's argument that
[b]y practice of the claimed features, the subject matter is
integrated into a practical application of an abstract idea which
is directed to improvements in computer performance,
particularly by a processor controlling receiving real time current
market price information from a remote network computing
device over a communication network, and automatically in
response to receiving the market order, in real time modifying
the market order price or causing immediate execution of the
market order based on a determination of the stability of the
current market price based on the real time current market price
information, which helps facilitate real time, high speed
communication and processing, without latency and with high
reliability and accuracy, of information associated with
transactions involving the processor of an electronic trading
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server and computers of a network of computers[.] Such claim
features clearly are rooted in networking and computers, and
recite improvements to technology rooted in networking and
computers.
Appeal Br. 10, (emphasis omitted). No technological implementation details
are recited. Simply calling for real time data reception and immediate
execution without reciting how such are accomplished is a conceptual idea
for doing so.
At that level of generality, the claims do no more than describe
a desired function or outcome, without providing any limiting
detail that confines the claim to a particular solution to an
identified problem. The purely functional nature of the claim
confirms that it is directed to an abstract idea, not to a concrete
embodiment of that idea.
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed.
Cir. 2016).
We are not persuaded by Appellant's argument that “the Final Action
fails to address each of the claim limitations of independent claim 2 that are
additional elements.” Appeal Br. 10. Each claim element is addressed
above.
We are not persuaded by Appellant's argument that the claim features
constitute an additional element(s) that integrates an
abstract idea into a practical application, which, in one
example, provides an improvement in the functioning of a
computer, or an improvement to other technology or
technical field. That is, in one example, these techniques help
improve computer performance, by controlling the amount
of information transmitted over the network and
controlling computer workload including computer
resources such as memory resources, processor resources, and
network resources such as network bandwidth, which
increases the efficiency of using an electronic trading
device.
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Appeal Br. 11. Again, no technological implementation details are recited.
The improvements come from the conceptual idea itself. “These benefits,
however, are not improvements to database functionality. Instead, they are
benefits that flow from performing an abstract idea in conjunction with a
well-known database structure.” BSG Tech LLC v. Buyseasons, Inc., 899
F.3d 1281, 1288 (Fed. Cir. 2018).
We are not persuaded by Appellant's argument that
[t]he aforementioned claim features of receiving real time current
market price information over a communication network, and
causing immediate action as immediate execution of a market
order in an electronic market based on a stability determination
that is in real time based on the real time current market price,
clearly are rooted in networking and computers, and recite
improvements to technology rooted in networking and
computers which integrate a judicial exception into a practical
application.
Appeal Br. 11, (emphasis omitted). The features are not rooted in
networking and computers, they are only recited as being in such a context.
This is insufficient to confer eligibility. “The Supreme Court and this court
have repeatedly made clear that merely limiting the field of use of the
abstract idea to a particular existing technological environment does not
render the claims any less abstract.” Affinity Labs of Texas, LLC v. DirecTV,
LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016).
Appellant further argues that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.
773 F.3d 1245 (Fed. Cir. 2014). Appeal Br. 11–12. In DDR Holdings,
the Court evaluated the eligibility of claims “address[ing] the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly
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transported away from a host’s website after ‘clicking’ on an
advertisement and activating a hyperlink.” Id. at 1257. There, the Court
found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no “pre-Internet analog.” Id. at 1258. The Court cautioned,
however, “that not all claims purporting to address Internet-centric
challenges are eligible for patent.” Id. For example, in DDR Holdings
the Court distinguished the patent-eligible claims at issue from claims
found patent-ineligible in Ultramercial. See id. at 1258–59 (citing
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715–16 (Fed. Cir. 2014)).
As noted there, the Ultramercial claims were “directed to a specific
method of advertising and content distribution that was previously
unknown and never employed on the Internet before.” Id. at 1258
(quoting Ultramercial, 772 F.3d at 715–16). Nevertheless, those claims
were patent ineligible because they “merely recite[d] the abstract idea of
‘offering media content in exchange for viewing an advertisement,’ along
with ‘routine additional steps such as updating an activity log, requiring a
request from the consumer to view the ad, restrictions on public access, and
use of the Internet.’” Id.
Appellant’s asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
media product;” “receiving from the consumer a request to view [a]
sponsor message;” and “if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
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access to said media product after receiving a response to said at least one
query.” 772 F.3d at 712. Similarly, Appellant’s asserted claims recite
modifying, storing, transmitting, receiving, and analyzing data. This is
precisely the type of Internet activity found ineligible in Ultramercial.
Appellant cites Berkheimer for the proposition that evidence of
something being conventional is necessary. Berkheimer v. HP Inc., 881
F.3d 1360 (Fed. Cir. 2018). Appeal Br. 13–14. Support for this finding is
provided under Step 2B supra.
We are not persuaded by Appellant’s argument that “[t]he Final
Action rejects claim 8 with substantially the same reasons as those asserted
against claim 2.” Appeal Br. 15. Appellant does not offer any separate
arguments and argues only that “claim 8 recites statutory subject matter for
at least the same reasons discussed above for claim 2.” Id. Appellant also
does not submit separate arguments for dependent claims 3–7 and 9–12.
Thus, claim 2 is argued as representative of all claims.

CONCLUSIONS OF LAW
The rejection of claims 2–12 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.

Appeal 2021-001501
Application 16/255,728

21

CONCLUSION
The rejection of claims 2–12 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
2–12 101 Eligibility 2–12

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) (2011).

AFFIRMED