CANTOR INDEX LLC

Patent Trials and Appeals Board

Oct 22, 2021

2021001848 (P.T.A.B. Oct. 22, 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.
15/625,139 06/16/2017 Dominic Crosthwaite 03-6148-C2 6125
63710 7590 10/22/2021
CANTOR FITZGERALD, L.P.
INNOVATION DIVISION
110 EAST 59TH STREET
NEW YORK, NY 10022
EXAMINER
WONG, ERIC TAK WAI
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
10/22/2021 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):
Caitlyn.kelly@chareiter.com
gabriella.zisa@chareiter.com
patentdocketing@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOMINIC CROSTHWAITE and LEWIS C. FINDLAY
____________

Appeal 2021-001848
Application 15/625,1391
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and
SHEILA F. McSHANE, Administrative Patent Judges.

McSHANE, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 25–40. 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(a). Appellant identifies the real party in interest as Cantor Index,
LLC. Appeal Brief filed October 16, 2020, hereafter “Appeal Br.” 3.
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BACKGROUND
The invention relates to a system and method for providing an
account. Specification, hereafter “Spec.,” see 3:12–13. The invention
includes the use of a trading platform which may be operable to activate a
new account for a prospective user. Id. at 3:27–28.
Representative claims 25 and 33 are the only independent claims, and
claim 25 is reproduced from page 14 of the Appeal Brief (Claims App.)
below. The italicized portions of the claim are the portions that the
Examiner considered in the determination of what the claim is directed to.
Final Act. 2–3.
25. An apparatus comprising[:]
a memory;
a network interface to communicate with remote devices;
at least one processor to:
receive data indicative of a request to open an account, the
request comprising identification information;
generate in the memory a decision matrix table comprising an
approval decision section that indicates a plurality of account types;
generate in the memory an identity check rules table and a
credit check rules table;
communicate, using the network interface, the identification
information to a remote credit verification server;
receive, via the network interface, a credit check score and an
identity check score from the remote credit verification server;
join the decision matrix table, the identity check rules table,
and the credit check rules table based on the credit check score and
the identity check score; and
transmit, via the network interface, an indication of an account
type in the approval decision section that results from the join.
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The Examiner rejects claims 25–40 under 35 U.S.C. § 101 as directed
to non-statutory subject matter. Final Action, hereafter “Final Act.” 2–7,
mailed March 30, 2017; Answer, hereafter “Ans.” 4–7, mailed November
19, 2020.
DISCUSSION
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.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with
that framework, we first determine what concept the claim is “directed to.”
See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to
the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas include certain methods of
organizing human activity, such as fundamental economic practices (Alice,
573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker
v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v.
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Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible
include physical and chemical processes, such as “molding rubber products”
(Diamond v. Diehr, 450 U.S. 175, 191 (1981) (“Diehr”)); “tanning, dyeing,
making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at
182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener,
94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see also e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation and quotation marks
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omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].”’ Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The USPTO has guidance on the application of 35 U.S.C. § 101, in
accordance with judicial precedent. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (“2019 Guidance”).
Under 2019 Guidance, a claim is “directed to” an abstract idea if the claim
recites any of (1) mathematical concepts, (2) certain methods of organizing
human activity, and (3) mental processes—without integrating such abstract
idea into a “practical application,” i.e., without “apply[ing], rely[ing] on, or
us[ing] 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.” Id. at 52–55. A claim so
“directed to” an abstract idea constitutes ineligible subject matter, unless it
recites an additional element (or combination of elements) amounting to
significantly more than the abstract idea. Id. at 56.
With this context in mind, we evaluate the Examiner’s rejection of
representative claim 25.2 The Examiner identifies portions of claim 25 and
considers these portions of the steps, finding that the claim is directed to “a

2 Appellant generally argues § 101 issues to the claims as a group using
claim 25 as representative (Appeal Br. 8–11), although Appellant asserts that
claim 33 is different than claim 25, and should be addressed separately (id.
at 12). We select claim 25 as representative of the majority of the claims for
the consideration of § 101 issues, and also address Appellant’s argument
relating to claim 33 herein. 37 C.F.R. § 41.37(c)(1)(iv).
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fundamental economic practice, commercial interactions, and managing
interactions between people, and therefore a certain method of organizing
human activity.” Final Act. 3. The Examiner further finds that “nothing in
the claims precludes the steps from practically being performed by a human
analog” because “the claim encompasses the same type of rule-checking by
a human analog referencing manual rules to make a decision.” Id. at 3–4.
Appellant presents no arguments disputing the Examiner’s findings
that the identified portions of the steps of claim 25 recite an abstract idea.
See generally Appeal Br.
We agree with the Examiner that the claims recite a judicial
exception, i.e., an abstract idea. See Final Act. 2–4; Ans. 3. Specifically,
when considering the identified portions of the steps of claim 25, we agree
that the claims recite fundamental economic and commercial practices,
which are among the certain methods of organizing human activity
identified as a judicial exception, in the form of activities associated with
checking credit and identity information for a request to open an account.
See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1280 (Fed. Cir. 2012) (identifying the concept of ‘‘managing a stable
value protected life insurance policy by performing calculations and
manipulating the results’’); Credit Acceptance Corp. v. Westlake Servs.,
859 F.3d 1044,1054 (‘‘The Board determined that the claims are directed to
the abstract idea of ‘processing an application for financing a purchase.’ . . .
We agree.’’).
We also agree with the Examiner that the claims may be practically
performed by a human, that is, by “rule-checking” by a human “referencing
manual rules to make a decision.” Final Act. 3–4. If a claim covers
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performance in the mind but for the recitation of generic components, it is in
the mental processes category. See Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (‘‘[W]ith 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.’’); Mortg. Grader, Inc. v. First Choice Loan Servs.
Inc., 811 F.3d. 1314, 1324 (Fed. Cir. 2016). We agree with the Examiner
that the claim recites generic computer components. Final Act. 3.
We therefore conclude that representative claim 1 recites a judicial
exceptions to 35 U.S.C. § 101, that is, mental processes and a method of
organizing human activity, which are abstract ideas.
The next issue under the second prong of step 2A is whether
additional elements in representative claim 1 integrate the judicial exception
into a practical application, such as elements reflecting an improvement in
the functioning of a computer or an improvement to other technology or
technical field.3,4

3 See, e.g., Alice, 573 U.S. at 223, discussing Diehr.
4 The 2019 Guidance states that the analysis of an “integration into a
practical application” involves “[i]dentifying . . . any additional elements
recited in the claim beyond the judicial exception(s)” and “evaluating those
additional elements individually and in combination to determine whether
they integrate the exception into a practical application.” 2019 Guidance,
54–55. Among the considerations “indicative that an additional element (or
combination of elements) may have integrated the exception into a practical
application” is whether “[a]n additional element reflects an improvement in
the functioning of a computer, or an improvement to other technology or
technical field.” Id. at 55 (footnote omitted). “[W]hether an additional
element or combination of elements integrate[s] the exception into a
practical application should be evaluated on the claim as a whole.” Id., n.24
(emphasis omitted).
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The Examiner finds that the additional elements of claim 25 include a
processor “which performs the steps relating receiving data, generating
tables, receiving scores, joining tables, and transmitting the results,” which
is recited at a high level of generality, and is “performing a generic computer
function of sending, receiving, and processing data.” Final Act. 4. The
Examiner finds that the other additional elements are a memory, which
stores received and generated data, and a network interface, which transmits
the results of the steps, where the elements are recited at a high level of
generality and perform generic computer functions. Id.
Appellant contends that in representative claim the judicial exception
is integrated into a practical application. Appeal Br. 8. More specifically,
Appellant argues that “the claimed subject matter improves the functioning
of the computer by providing a type of filter for user profile information that
does not meet a certain criteria.” Id. at 9. Appellant refers to paragraphs 8
and 9 of published application US2017/0287072 (Spec. 3:27–4:21),
contending that the claimed subject matter is technical which allows
“accounts to be approved in ‘real-time,’” and is an improvement to the
functioning of the computer. Appeal Br. 9. Appellant further asserts that
the claim recites a specific database operation, as recited in the “join the
decision matrix table” limitation. Id. at 9–10.
We are not persuaded of error by the Examiner on the issue of
whether the additional elements in representative claim 25 integrate the
judicial exception into a practical application. We agree with the Examiner
in “determining what types of accounts a user is qualified for in this case is a
business decision” performed by generic computing technology and that
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computing technology is used as an implementation tool and is not a
technical improvement. Ans. 5 (emphasis added).
On the “real-time” issue, the portion of the Specification that
Appellant refers for support of the improvement in the functioning of a
computer indicates that the activation of a new account in real time or
substantially in real time is an advantage of the invention. Spec. 3:27–4:21.
However, the real-time aspect, that is, the speed increase for the activation of
a new account, is due to the capabilities of a general-purpose computer,
rather than as a result of the steps of the claimed invention. See Spec.
14:16–28; Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter.”). In
other words, the “real-time” aspect does not relate to or provide support that
the claim recites an improvement of the functioning of computers or other
technology.
As to the issue of the specific database operation, as recited in the
“join the decision matrix table” limitation, the Examiner finds, and we agree,
that joining database tables is described at a high level of generality and
performs a generic function of processing data. Final Act. 8; Ans. 5. The
decision matrix, as described in the Specification, includes different
sections, such as an identity authentication section and a credit check
section, which can include credit check scores and identity check scores.
Spec. 57:18–58:12. The Specification also describes the use of general
computing equipment, with no special algorithms or software programming
disclosed. See e.g., Spec. 14:16–28. We do not discern any special
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functions are associated with joining the respective sets of data; instead, the
Specification describes, at a high level of generality, generic processing of
data such as data retrieval and calculations, which is consistent with the
Examiner’s findings. See id.; see also Final Act. 8; Ans. 5.
As a result, we conclude that representative claim 25 does not recite
additional elements that integrate the judicial exception into a practical
application, and, and discussed above, we find no reversible error with the
Examiner’s findings that representative claim 25 recites abstract ideas.
We now look to whether representative claim 25 contains any
inventive concept or adds anything significantly more to transform the
abstract concept into a patent-eligible application. Alice, 573 U.S. at 216.
The Federal Circuit has held that, after determining that the claim is
directed to an ineligible concept, we assess “whether the claim limitations,
other than the invention’s use of the ineligible concept to which it was
directed, were well-understood, routine, and conventional.” BSG Tech LLC
v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). We find no error
with the Examiner’s finding that the claim does not recite more that the
implementation of the abstract idea by a computer. Final Act. 5; Ans. 6–7.
More specifically, the Examiner refers to the Specification which discloses
general computer products for performing the claim and which does not
disclose any “technically-specific computer algorithm or code, but rather
merely states that the claimed steps may be performed by the generic
modules.” Final Act. 5–6 (citing Spec. 14).
Appellant asserts that “[t]he claimed subject matter of the instant case
is a filter for users that would not be eligible for an account,” which is akin
to the claimed subject matter in BASCOM. Appeal Br. 11 (citing Bascom
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Glob. Internet Servs., Inc. v. AT&T Mobility LLC (“BASCOM”), 827 F.3d
1341 (Fed. Cir. 2016)). In contrast to claim 25, BASCOM is directed to an
improvement in technology. In BASCOM, the Federal Circuit agreed that
the evidence presented for the claims at issue in that case supported that an
ordered combination of the claim elements provided a specific way to filter
content on the Internet to overcome existing technology problems with other
Internet-filtering systems and improved the filtering performance of the
computer system itself, which represented significantly more than each of
the conventional elements. BASCOM, 827 F.3d at 1351. Here, the
“filtering” is done by analyzing data to determine whether users would not
be eligible for an account, which is a business decision-making process.
Appellant does not identify any improvement to technology.
We agree with the Examiner that, unlike BASCOM, “the function
performed by the computer at each step of the process is purely
conventional” for the instant claim. Ans. 6. Further, the Examiner finds,
and we agree, that the claims do not improve the functioning of a computer
or improve any other technology or technical field, so the additional
elements do not amount to significantly more than the identified judicial
exception. Id. Instead, the claim does not recite more that the
implementation of the abstract idea by a generic computer.
Accordingly, we are not persuaded of error in the Examiner’s
conclusion that representative claim 25 is directed to patent-ineligible
subject matter.
Appellant additionally argues that “[i]ndependent claim 33 is different
from claim 25 and must be interpreted and examined on its own merit,” and
the Examiner rejected claim 33 for substantially the same reasons as those
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asserted against claim 25. Appeal Br. 12. Appellant argues that claim 33
recites eligible subject matter for the same reasons asserted for
representative claim 25. Id.
The Examiner finds, and we agree that, claim 33 recites substantially
similar limitations as representative independent claim 25. Ans. 7. The
Examiner relied upon the same analysis for claim 33 as claim 25. See Final
Act. 2–7. Appellant presents no new arguments specific to claim 33.
Appeal Br. 12. We are not persuaded of error in the Examiner’s conclusion
that independent claim 33 is directed to patent-ineligible subject matter for
the same reasons discussed for claim 25.
Accordingly, we are not persuaded of error in the Examiner’s
conclusion that representative claim 25, and the remainder of the claims, that
is, claims 26–40, are directed to patent-ineligible subject matter, and we
therefore sustain the rejection.
CONCLUSION
For the above reasons, the Examiner’s rejection of claims 25–40 is
affirmed.
DECISION SUMMARY
In summary:

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
25–40 101 Eligibility 25–40

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED