Clifford J. Weber et al.

Patent Trials and Appeals Board

Apr 27, 2020

14788931 - (D) (P.T.A.B. Apr. 27, 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.
14/788,931 07/01/2015 Clifford J. Weber MKT-14-1087CIP-
CON-CON
4008
35811 7590 04/27/2020
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 5000
PHILADELPHIA, PA 19103
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
04/27/2020 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):
pto.phil@us.dlapiper.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLIFFORD J. WEBER, CAROL ALEXANDER,
JASON MACQUEEN, CHARLES A. BAKER,
GARY L. GASTINEAU, and TERRY NORMAN
Appeal 2018-008654
Application 14/788,931
Technology Center 3600
Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–10, which are all claims pending in
the application. 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 NYSE
MKT LLC. Appeal Br. 1.
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STATEMENT OF THE CASE2
The claims are directed to systems and methods for trading actively
managed funds. See Spec. (Title). In particular, Appellant’s disclosed
embodiments and claimed invention “relate[] to systems and methods to
allow public intra-day trading of financial instruments such as shares of
actively managed funds on secondary markets without knowledge of the
specific assets underlying the traded instruments.” Spec. ¶ 1.
Exemplary Claim
Claims 1 and 2, reproduced below, are representative of the subject
matter on appeal (emphases added to contested prior-art limitations):
1. A method executed by a computer system for
presenting valuation information representative of a data set
without revealing contents of the data set, the method
comprising:
receiving, by one or more computers of the computer
system having non-transitory memory storing computer
software and at least one processor executing the computer
software, the data set comprising information related to a traded
fund having assets;
generating, by the one or more computers, supplemental
data defining a proxy portfolio and an estimated value of the
proxy portfolio, the supplemental data representative of the data
set, the step of generating further comprising:

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
Dec. 12, 2017); Reply Brief (“Reply Br.,” filed Sept. 5, 2018); Examiner’s
Answer (“Ans.,” mailed July 6, 2018); Final Office Action (“Final Act.,”
mailed Sept. 20, 2017); and the original Specification (“Spec.,” filed
July 1, 2015) (claiming ultimate benefit of US 09/536,258, filed
Mar. 27, 2000).
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determining, by the computer system, a set of risk
factors from a risk factor model, the set of risk factors
comprising a historical time series of data;
receiving or calculating by the computer system a
set of traded fund sensitivity coefficients, wherein each
traded fund sensitivity coefficient specifies an exposure
of the traded fund to one of the risk factors in the set of
risk factors;
calculating by the computer system weights of
securities to create the proxy p01ifolio that does not
reveal the assets of the traded fund and has sensitivity
coefficients that track the set of the sensitivity coefficients
of the traded fund; and
calculating by the computer system the estimated
value for the traded fund based on the value of the proxy
portfolio where the identities of the assets of the traded
fund are not disclosed to an investor who trades shares
of the traded fund on a secondary market, and the assets
of the traded fund are not publicly disclosed on a daily
basis;
presenting, by the computer system, at least a portion of
the supplemental data representative of the data set by
publishing the estimated value of the traded fund periodically
throughout a trading day; and
receiving, by the computer system, an influx of orders
from participant devices responsive to the presentation of the
portion of the supplemental data representative of the data set.
2. A computer-implemented method for presenting
valuation information representative of a data set without
revealing contents of the data set, the method comprising:
receiving, by one or more computers of a computer
system having non-transitory memory storing computer
software and at least one processor executing the computer
software, the data set comprising information related to a fund
having assets;
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generating, by the one or more computers, supplemental
data defining a proxy portfolio and an estimated value of the
proxy portfolio, the supplemental data representative of the data
set, the step of generating further comprising:
determining, by the computer system, a set of risk
factors from a risk factor model, the set of risk factors
comprising a historical time series of data,
receiving, by the computer system, a set of fund
sensitivity coefficients and storing the set of fund
sensitivity coefficients on computer readable media,
wherein each fund sensitivity coefficient specifies the
exposure of the fund to one of the risk factors,
creating, by the computer system, the proxy
portfolio having sensitivity coefficients that track the set
of the sensitivity coefficients of the fund, where the proxy
portfolio does not reveal the fund assets, and
calculating, by the computer system, the estimated
value for the fund based on the value of the proxy
portfolio, wherein the calculating the estimated value is
repeated periodically throughout a trading period,
presenting, by the computer system, at least a portion of
the supplemental data representative of the data set by
publishing the estimated value for the fund periodically
throughout the trading period for use by at least a first entity to
trade shares of the fund on a secondary market, wherein the
estimated value is published without disclosing the fund assets;
and
receiving, by the computer system, an influx of orders
from participant devices responsive to the presentation of the
portion of the supplemental data representative of the data set.

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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Dembo US 5,799,287 Aug. 25, 1998
Kiron et al. (“Kiron”) US 2002/0143676 A1 Oct. 3, 2002
Feuerverger US 2003/0139993 A1 July 24, 2003
Parmmeswaran Gopikrishnan, Bernd Rosenow, Vasiliki Plerou,
and H. Eugene Stanley, “Quantifying and interpreting collective
behavior in financial markets”, PHYSICAL REVIEW E, Vol. 64,
035106(R), published 30 August 2001 (identified by the Examiner
as “Makelainen”).3
Related Applications
A Notice of Appeal was filed in copending Application Serial Number
14/822,286, Appeal Number 2018-005744. In our Decision mailed
January 3, 2020, we reversed the Examiner's rejections.
A Notice of Appeal was filed in copending Application Serial Number
14/812,717, Appeal Number 2018-005741. In our Decision mailed
January 3, 2020, we affirmed in part the Examiner's rejections.
A Notice of Appeal was filed in copending Application Serial Number
14/822,198, Appeal Number 2018-005812. In our Decision mailed
January 14, 2020, we affirmed in part the Examiner's rejections.

3 We are uncertain of the reason for the Examiner’s designation of this non-
patent literature reference as “Makelainen,” as none of the cited authors
appear to have the surname “Makelainen.”
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A Notice of Appeal was filed in copending Application Serial Number
14/822,355, Appeal Number 2018-008605. In our Decision mailed
April 21, 2020, we affirmed the Examiner's rejections.
Rejections on Appeal
R1. Claims 1, 2, and 10 stand rejected under 35 U.S.C. § 112, first
paragraph, as lacking written description support. Final Act. 3.
R2. Claims 1, 2, and 10 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for use of the term “influx.” Final
Act. 4.
R3. Claims 1, 2, and 10 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for use of the terms “valuation
information,” “data set,” and “supplemental data.” Final Act. 4–5.4
R4. Claims 1–10 stand rejected under 35 U.S.C. § 101 as being
directed to a judicial exception (i.e., a law of nature, a natural phenomenon,
or abstract idea) without significantly more. Final Act. 3.
R5. Claims 1–10 stand provisionally rejected under the judicially-
created doctrine of obviousness-type double patenting over claims 1–17 of
U.S. Patent 7,822,678. Final Act. 10.

4 We note the Examiner also objects to the Specification in connection with
these limitations. Final Act. 2. While such objections are generally
petitionable and not appealable, “[d]ecisions of the examiner directly
relating to the rejection of claims are subject to appeal.” In re Searles, 422
F.2d 431, 435 (CCPA 1970). Further, “[i]f both the claims and specification
contain new matter either directly or indirectly, and there has been both a
rejection and objection by the examiner, the issue becomes appealable and
should not be decided by petition.” MPEP § 2163.06(II).
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R6. Claims 1–10 stand provisionally rejected under the judicially-
created doctrine of obviousness-type double patenting over claims 1–5 of
U.S. Patent U.S. 8,170,934. Id.
R7. Claims 1–6 and 10 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Dembo, Kiron, and Feuerverger.
Final Act. 14.
R8. Claims 7–9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Dembo, Kiron, Feuerverger, and
Makelainen. Final Act. 17.
ISSUES AND ANALYSIS
We pro forma affirm the Examiner’s OTDP Rejections R5 and R6 of
claims 1–10 as discussed herein.
However, we agree with particular arguments made by Appellant with
respect to Rejections R1 through R3 of claims 1, 2, and 10, and R4, R7, and
R8 of claims 1–10, as discussed herein. We highlight and address specific
findings and arguments regarding representative claim 1, except where
noted, for emphasis as follows.
1. § 112, ¶ 1 Written Description Rejection R1 of Claims 1, 2, 10
Issue 1
Appellant argues (Appeal Br. 10–11; Reply Br. 8) the Examiner’s
rejection of claims 1, 2, and 10 under 35 U.S.C. § 112, first paragraph, as
lacking written description support is in error. These contentions present us
with the following issue:
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Did the Examiner err in finding the recitation of “an influx of orders,”
as recited in these claims, lacks written description support?
Principles of Law
The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he level of detail
required to satisfy the written description requirement varies depending on
the nature and scope of the claims and on the complexity and predictability
of the relevant technology.” Id. See also PowerOasis, Inc. v. T-Mobile
USA, Inc., 522 F.3d 1299, 1306-07 (Fed.Cir.2008) (explaining that § 112,
first paragraph, “requires that the written description actually or inherently
disclose the claim element”). “[I]t is not a question of whether one skilled in
the art might be able to construct the patentee’s device from the teachings of
the disclosure . . . . Rather, it is a question whether the application
necessarily discloses that particular device.” Lockwood v. American
Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997)(quoting Jepson v.
Coleman, 314 F.2d 533, 536 (CCPA 1963)).
Analysis
The Examiner finds “[t]he claim(s) contain subject matter which was
not described in the specification in such a way” to convey that the
inventor(s) “had possession of the claimed invention. Applicant introduces
new matter to claims 1, 2, and 10” by amendment to recite the limitation
“receiving, by the computer system, an influx of orders from participant
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devices responsive to the presentation of the portion of the supplemental
data representative of the data set.” Final Act. 3.5
Appellant responds by arguing, “[s]upport for this limitation may be
found, for example, at least at paras. [0043] and [0044] of the subject
specification.” Appeal Br. 10.
Based on the disclosure [in Specification paragraphs 43, 44, and
49] outlined above, the skilled person would understand that:
the claimed presentation of the supplemental data is based on
the proxy portfolio, the proxy portfolio does not reveal the
contents of the underlying traded fund (the data set), and the
published supplemental data incentivizes participation (by
eliminating concerns associated with free riders / front runners).
The skilled person would also understand that participation in a
trading system means, at least implicitly (from paras. [0043]–
[0044] of the subject specification), refers to receiving an influx
of orders from participant devices responsive to presenting the
supplemental data. Thus, the claimed receiving limitation is
indeed supported by the Appellant’s specification.
Appeal Br. 11.
We are persuaded by Appellant’s argument that the Examiner erred.
We are persuaded because we find the Specification adequately describes
“receiving . . . an influx of orders,” as claimed. Furthermore, we are
persuaded of Examiner error by noting the dictionary definition of “influx”
is “a coming in.”6 Moreover, “the level of detail required to satisfy the
written description requirement varies depending on the nature and scope of
the claims and on the complexity and predictability of the relevant
technology.” Ariad Pharm., 598 F.3d at 1351.

5 The Examiner also objects to the Specification. Final Act. 2.
6 See https://www.merriam-webster.com/dictionary/influx.
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Thus, we determine that the recitation of “an influx of orders” is
adequately described such that a person with skill in the art would
understand that the inventor had possession of the claimed invention at the
time of the invention, and therefore, we do not sustain the Examiner’s
written description Rejection R1 of claim 1, and claims 2 and 10, which also
recite the disputed limitation in commensurate form.
2. § 112, ¶ 2 Indefiniteness Rejection R2 of Claims 1, 2, 10
Issue 2
Appellant argues (Appeal Br. 11–12) the Examiner’s rejection of
claims 1, 2, and 10 under 35 U.S.C. § 112, second paragraph, as being
indefinite is in error. These contentions present us with the following issue:
Did the Examiner err in concluding the recitation of “an influx of
orders,” as recited in each of claims 1, 2, and 10, is indefinite?
Principles of Law
“[A] patent is invalid for indefiniteness if its claims, read in light of
the specification delineating the patent, and the prosecution history, fail to
inform, with reasonable certainty, those skilled in the art about the scope of
the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901
(2014). Further, we give pending claims “their broadest reasonable
interpretation consistent with the specification” and “in light of the
specification as it would be interpreted by one of ordinary skill in the art.”
Am. Acad., 367 F.3d at 1364.
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Analysis
The Examiner concludes “[t]he term ‘influx’ . . . is a relative term
which renders the claim indefinite” because “one of ordinary skill in the art
would not be reasonably apprised of the scope of the invention.” Final
Act. 4.
Appellant argues “[r]egarding the word ‘influx,’ as discussed above
with respect to the § 112, first paragraph rejection, the word ‘influx’ is a
term that is, at a minimum, implicit when viewed in the context of the
Specification. As such, the term ‘influx’ [of orders from participant devices]
would also be understood by those of skill in the art as being a part of the
written description in the Specification.” Appeal Br. 12.
For essentially the reasons discussed above with respect to the § 112,
first paragraph, written description Rejection R1, we agree with Appellant’s
argument that a person with skill in the art would be able to ascertain the
scope of the claimed “influx [of orders].”
Accordingly, we do not sustain the Examiner’s indefiniteness
Rejection R2 of claim 1, and claims 2 and 10, which also recite the disputed
“influx” limitation in commensurate form.
3. § 112, ¶ 2 Indefiniteness Rejection R3 of Claims 1, 2, 10
Issue 3
Appellant argues (Appeal Br. 11–12) the Examiner’s rejection of
claims 1, 2, and 10 under 35 U.S.C. § 112, second paragraph, as being
indefinite is in error. These contentions present us with the following issue:
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Did the Examiner err in concluding the recitation of “valuation
information,” “data set,” and “supplemental data,” as recited in each of
claims 1, 2, and 10, is indefinite?
Analysis
The Examiner concludes “[i]t is unclear from the claims what
constitutes a ‘valuation information’, a ‘data set’, and ‘supplemental data’,
the specification does not provide a definition for ascertaining standard, and
one of ordinary skill in the art would not be reasonably apprised of the scope
of the invention.” Final Act. 4–5.
Appellant disagrees with the Examiner’s conclusion of indefiniteness,
and responds by pointing to the Specification and at least partially relying
upon inherency to provide support for the contested phrases “valuation
information,” “data set,” and “supplemental data,” which “are terms that are
clearly supplied by the Specification. As such, these terms (as well as the
rest of the claim terms) would be understood by those of skill in the art as
being a part of the written description in the Specification.” Appeal
Br. 11–12; see also Appeal Br. 6–10 (citing Spec. ¶¶ 38, 47).
For example, para. [0038] of the Specification describes
a fund computer 110 storing an (electronic) portfolio file 115.
Storing an electronic portfolio file in a computer will be
understood by those of skill in the art as storing a “data set”
representing said portfolio file; indeed, no skilled artisan will
think that a physical or paper file is somehow inserted into a
computer device for storage. In addition, para. [0047] of the
Specification describes that a computer creates the proxy
portfolio. Creating a proxy portfolio in a computer will be
understood to those of skill in the art to refer to creating data
defining that portfolio, which data is different than the original
“data set”, i.e., “supplemental data”.
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In addition, Claims 1 and 10 recite publishing or publicly
disclosing “the estimated value . . . .” Any skilled artisan will
understand that publishing or publicly disclosing an estimated
value is the same thing as presenting “valuation information.”
Appeal Br. 7.
Thus, in light of the Specification and Appellant’s arguments, we
agree with Appellant that the contested terms are sufficiently definite such
that a person with skill in the art would be able to ascertain the scope of the
invention in light of the Specification. Accordingly, we do not sustain the
Examiner’s indefiniteness Rejection R3 of claim 1, and claims 2 and 10,
which also recite the disputed limitations in commensurate form.
Furthermore, in light of our reversal of indefiniteness Rejection R3 of
claims 1, 2, and 10, we thereby determine the Examiner’s objection to the
Specification related to the contested limitations is rendered moot.
4. § 101 Rejection R4 of Claims 1–10
Issue 4
Appellant argues (Appeal Br. 12–21; Reply Br. 2–10) the Examiner’s
rejection of claim 27 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:

7 Based on our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the
appeal of patent-ineligible subject matter Rejection R4 of claims 1–10 on the
basis of representative claim 2. Independent claims 1 and 10 are similar in
scope and present the same dispositive issue as presented with respect to
independent claim 2.
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Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 2 patent-ineligible under
§ 101?
Principles of Law
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.8
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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (alteration in original) (citing Diamond v.
Diehr, 450 U.S. 175, 185 (1981)).
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 Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). 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 . . . .”).

8 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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Concepts determined to be abstract ideas, and thus patent ineligible,
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. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “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 “[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. (citation omitted) (citing Benson and Flook); see, 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.”).
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Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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 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. (alterations in original) (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.
B. USPTO Revised Guidance
The PTO published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised Guidance, we first look to whether the claim
recites:
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(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes);9 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).10
See Revised Guidance 52–53.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial
exception.11
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain

9 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
10 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
11 Items (3) and (4) continue to be collectively referred to as “Step 2B” of
the Supreme Court’s two-step framework, described in Mayo and Alice.
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that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.12
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).

12 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
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Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,13
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.

13 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.14 The Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B)
because the additional elements recited in the claims provided “significantly
more” than the recited judicial exception (e.g., because the additional
elements were unconventional in combination).15 Therefore, if a claim has
been determined to be directed to a judicial exception under Revised Step
2A, we must also evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive
concept (i.e., whether the additional elements amount to significantly more
than the exception itself).16

14 See, e.g., Diehr, 450 U.S. at 187.
15 See, e.g., Amdocs, Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300,
1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings v.
Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
16 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
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Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “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.” See Revised Guidance,
Section III.B.17
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during

(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
17 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See Berkheimer Memo 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
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Analysis
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
Based upon Appellant’s arguments (Appeal Br. 12–21; Reply
Br. 6–7), we determine analysis under Step 2A(ii) is dispositive to our
Decision.18
Assuming for purposes of this Decision that the claims are directed to
a judicial exception under the Revised Guidance, Step 2A(i), i.e., “public
intra-day trading of financial instruments such as shares of actively managed
funds on secondary markets without knowledge of the specific assets
underlying the traded instruments,” (Spec. ¶ 1),19 we proceed to the
“practical application” step. For Step 2A(ii), we determine whether the
recited judicial exception is integrated into a practical application of that
exception in by: (a) identifying whether there are any additional elements
recited in the claim beyond the judicial exception(s); and (b) evaluating
those additional elements individually and in combination to determine
whether they integrate the exception into a practical application.

18 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on “a
single dispositive issue”).
19 Alternatively, for purposes of this Decision, and as set forth by the
Examiner, the claims recite a judicial exception, i.e., “the abstract idea(s) of
trading actively managed funds.” Ans. 3. Under either assumption, and for
purposes of this Decision, under the Revised Guidance, the claims recite an
abstract idea that may be characterized as a certain method of organizing
human activity in the form of a commercial interaction or as a fundamental
economic practice.
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Claim 2 recites, in pertinent part (emphases added): “creating, by the
computer system, the proxy portfolio having sensitivity coefficients that
track the set of the sensitivity coefficients of the fund, where the proxy
portfolio does not reveal the fund assets,” and “presenting, by the computer
system, at least a portion of the supplemental data representative of the data
set by publishing the estimated value for the fund periodically throughout
the trading period for use by at least a first entity to trade shares of the fund
on a secondary market, wherein the estimated value is published without
disclosing the fund assets.”
For the reasons discussed below, we conclude these limitations
integrate the abstract idea of “public intra-day trading of financial
instruments such as shares of actively managed funds on secondary markets
without knowledge of the specific assets underlying the traded instruments”
into a practical application as determined under at least one of the MPEP
sections cited above.20
Appellant’s Specification discloses the invention “relates to systems
and methods to allow public intra-day trading of financial instruments such
as shares of actively managed funds on secondary markets without
knowledge of the specific assets underlying the traded instruments.” Spec.
¶ 1. Further:
The invention provides systems and methods that allow
trading of any fund while maintaining secrecy of the specific
assets of the fund. While much of the following description is
in terms of AMETFs, the funds traded using the systems and

20 See, e.g., MPEP § 2106.05(a) “Improvements to the Functioning of a
Computer or To Any Other Technology or Technical Field,” and
§ 2106.05(e) “Other Meaningful Limitations.”
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methods of the invention can include (and the term "fund" as
used herein includes at least the following): any type of
investment instrument including, for example, shares of mutual
funds, unit investment trusts (UITs), closed-end funds, grantor
trusts, hedge funds, any investment company, or any other type
of collective investment. Furthermore, while the examples
provided herein demonstrate intraday trading of fund shares on
a stock exchange without disclosure of fund assets, the systems
and methods of the invention are equally applicable to trading
of secret-asset fund shares at any time on any venue, market, or
exchange, for example, after-hours trading on a U.S. or foreign
exchange, or on an electronic trading network (ECN) or over-
the-counter, third market, or other off-exchange trading venue.
Spec. ¶ 30.
We find Appellant’s arguments are consistent with this disclosure:
Appellant’s claimed processing functions are specifically
structured to shield the contents of a proprietary portfolio by
providing data representative of the actual, proprietary portfolio
(e.g., supplemental data defining a proxy portfolio), without
actually revealing the contents of the proprietary portfolio. In
this manner, the claimed invention is able to incentivize user
participation in the system, resulting in increased efficiency of
trade execution, while at the same time maintaining the contents
of the proprietary portfolio secret.
This is achieved by providing a mechanism for creating a
supplemental data set that accurately tracks an original data set
(e.g., that defines the proprietary portfolio). By creating a new
supplemental data set that accurately tracks the original data set,
movements or shifts that affect the original data set ( e.g., that
affect the proprietary portfolio) can be replicated and accurately
reflected in the supplemental data set ( e.g., reflected in the
proxy portfolio) without ever having to reveal the contents of
the original data set. As a result, users gain confidence to
submit orders for a portfolio whose contents they will never see
without the fear that front runners or free riders will use
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unethical trading practices to gain advantages they otherwise
would have if they could determine portfolio trading trends.
Appeal Br. 14–15.
We find Appellant’s argument persuasive that carrying out the
“creating” and “presenting” steps of claim 2 (and similar recitations in
independent claims 1 and 10) provide improvements to the underlying
technology or technical field, namely, fund trading systems. See MPEP
§ 2106.05(a) or, alternatively, § 2106.05(e) “Other Meaningful Limitations.”
With respect to these other meaningful limitations, we find guidance
in MPEP § 2106.05(e), which summarizes and relies upon the Supreme
Court’s holding in Diehr, cited supra, and our reviewing court’s holding in
Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011) (decision on remand from the Supreme Court, which had vacated the
lower court’s prior holding of ineligibility in view of Bilski v. Kappos).
In Diehr, the Court evaluated the additional non-abstract limitations,
and found them to be meaningful, because they sufficiently limited the use
of the (abstract idea) mathematical equation to the practical application of
molding rubber products. MPEP § 2106.05(e) (citing Diehr, 450 U.S. at
184, 187).
In Classen, the Federal Circuit held that, although the analysis step
was an abstract mental process that collected and compared known
information, the (practical application) immunization step was meaningful
because it integrated the results of the analysis into a specific and tangible
method that resulted in the method “moving from abstract scientific
principle to specific application.” MPEP § 2106.05(e) (citing Classen, 659
F.3d at 1066–68).
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We find these other meaningful limitations identified above provide a
technological improvement to fund trading systems. See Appeal Br. 14 et
seq. Accordingly, we conclude, when the claim is considered as a whole,
the recited judicial exception is integrated into a practical application as
determined under either MPEP sections 2106.06(a) or 2106.05(e) cited
above, such that the claim is patent-eligible.
Therefore, based upon the findings and legal conclusions above, on
this record and in consideration of the Revised Guidance, we are persuaded
the claims are directed to patent-eligible subject matter, such that we do not
sustain the § 101 rejection of claims 1–10.
Because the claims are directed to a patent-eligible concept, this
concludes the patent-eligibility inquiry.
5. OTDP Rejection R5 of Claims 1–10
Issue 5
Did the Examiner err in rejecting claims 1–10 over claims 1–17 of
U.S. Patent 7,822,678 under the judicially-created doctrine of obviousness-
type double patenting?
Analysis
In view of the lack of any substantive or separate arguments directed
to provisional OTDP Rejection R5 of claims 1–10 over the cited patent
claims of record (see Appeal Br. 21), we pro forma sustain the Examiner’s
rejection of these claims. Arguments not made are waived.21

21 Appellant merely states, “Appellant respectfully disagrees and submits
that the claims of the instant application are patentably distinct from the
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6. OTDP Rejection R6 of Claims 1–10
Issue 6
Did the Examiner err in rejecting claims 1–10 over claims 1–5 of U.S.
Patent 8,170,934 under the judicially-created doctrine of obviousness-type
double patenting?
Analysis
In view of the lack of any substantive or separate arguments directed
to provisional OTDP Rejection R6 of claims 1–10 over the cited patent
claims of record (see id.), we pro forma sustain the Examiner’s rejection of
these claims. Arguments not made are waived. See n.19.
7. § 103 Rejection R7 of Claims 1–6 and 10
Issue 7
Appellant argues (Appeal Br. 22–24) the Examiner’s rejection of
claims 1, 2, and 10 under 35 U.S.C. § 103(a) as being obvious over the
combination of Dembo, Kiron, and Feuerverger is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests “[a] computer-implemented method for presenting valuation
information representative of a data set without revealing contents of the
data set” that includes, inter alia, the steps of “generating . . . supplemental
data defining a proxy portfolio and an estimated value of the proxy

cited patents. Nonetheless, to the extent that they are not, the Appellant
respectfully requests that these rejections be held in abeyance until
resolution of all other rejections/objections.” Appeal Br. 21.
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portfolio,” and “creating . . . the proxy portfolio having sensitivity
coefficients that track the set of the sensitivity coefficients of the fund,
where the proxy portfolio does not reveal the fund assets,” as recited in
claim 2?22
Analysis
As an initial matter, in relying upon the purported teachings of
Dembo, the Examiner refers to a “traded fund” in “Claim 56” of Dembo, and
further states “[n]ote that even though prior art has been applied, the claim
limit ‘for calculating an estimated value for a traded fund without publicly
disclosing the assets of the traded fund’ is a statement of intended use and
not a functional or structural claim limit.” Final Act. 13.
We disagree with the Examiner’s findings and claim construction
because (a) there is no claim 56 to be found in any of the cited prior art,
including Dembo, that we may compare to any of Appellant’s claims on
Appeal; and (b) the quoted “intended use” claim limitation does not appear
in any of independent claims 1, 2, or 10.
The Examiner sets forth further claim construction along these lines,
and then refers to teachings and suggestions of the Kiron reference.
Kiron teaches a method for calculating an estimated value
for a traded fund without publicly disclosing the assets of
the traded fund ([claims 146–149]. Note that even though
prior art has been applied, the claim limit “for calculating an
estimated value for a traded fund without publicly disclosing
the assets of the traded fund” is a statement of intended use and,
as such, is given no patentable weight.).

22 Independent claims 1 and 10 recite limitations commensurate in scope to
independent claim 2.
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Final Act. 15. As mentioned above, we find no such limitation, as quoted by
the Examiner, in any of the claims on Appeal.
With respect to any purported “intended use” limitations, we note the
preamble of claim 1 recites “[a] method executed by a computer system for
presenting valuation information representative of a data set without
revealing contents of the data set,” and independent claim 2’s preamble
similarly recites “[a] computer-implemented method for presenting valuation
information representative of a data set without revealing contents of the
data set.” Contrary to the Examiner’s determination, we are unable to
conclude that any other limitation in independent claims 1, 2, and 10 would
properly be construed as reciting an “intended use.”
In this regard, we do note claim 1 recites a step of “calculating by the
computer system the estimated value for the traded fund based on the value
of the proxy portfolio where the identities of the assets of the traded fund are
not disclosed to an investor who trades shares of the traded fund on a
secondary market, and the assets of the traded fund are not publicly
disclosed on a daily basis,” and claim 2 similarly recites “creating, by the
computer system, the proxy portfolio having sensitivity coefficients that
track the set of the sensitivity coefficients of the fund, where the proxy
portfolio does not reveal the fund assets,” and “calculating, by the computer
system, the estimated value for the fund based on the value of the proxy
portfolio, wherein the calculating the estimated value is repeated
periodically throughout a trading period.” We conclude none of these
limitations constitute an “intended use,” contrary to the Examiner’s
construction.
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We therefore conclude the recited claim limitations, with or without
consideration of the preamble, recite a complete invention that includes
presenting valuation information in the body of the claim. “If the body of a
claim fully and intrinsically sets forth all of the limitations of the claimed
invention, and the preamble merely states, for example, the purpose or
intended use of the invention, rather than any distinct definition of any of the
claimed invention’s limitations, then the preamble is not considered a
limitation and is of no significance to claim construction.” MPEP § 2111.02
(II) (citing Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305
(Fed. Cir. 1999)). C.f. Jansen v. Rexall Sundown, Inc., 342 F.3d 1329,
1333–34 (Fed. Cir. 2003) (In a claim directed to a method of treating or
preventing pernicious anemia in humans by administering a certain vitamin
preparation to “a human in need thereof,” the court held that the preamble is
not merely a statement of effect that may or may not be desired or
appreciated, but rather is a statement of the intentional purpose for which the
method must be performed. Thus the claim is properly interpreted to mean
that the vitamin preparation must be administered to a human with a
recognized need to treat or prevent pernicious anemia). We conclude the
holding regarding the claims in Jansen is relevant to this Appeal because the
claims in Jansen are sufficiently analogous to the claims on Appeal.
We conclude the method claims on appeal do not recite an intended
use. However, to the extent our reviewing court may construe the claims as
reciting an intended use in the preamble, we conclude, at a minimum, the
claims recite a complete invention that ties the recited steps to the preamble.
Accordingly, we determine the Examiner erred by failing to give
patentable weight to various limitations, e.g., “calculating by the computer
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system the estimated value for the traded fund based on the value of the
proxy portfolio where the identities of the assets of the traded fund are not
disclosed to an investor who trades shares of the traded fund on a secondary
market, and the assets of the traded fund are not publicly disclosed on a daily
basis,” as recited in claim 1, and as similarly recited in independent claims 2
and 10.
Appellant further contends the Examiner erred in finding that Dembo
teaches or suggests “generating, by the one or more computers,
supplemental data defining a proxy portfolio and an estimated value of the
proxy portfolio,” and “creating, by the computer system, the proxy portfolio
having sensitivity coefficients that track the set of the sensitivity coefficients
of the fund, where the proxy portfolio does not reveal the fund assets,” as
recited in claim 2. Appellant argues:
Dembo describes a replicating portfolio that is created by the
user specifying “ranges of values for any uncertain parameters
(for example volatility, yields, beta) to be used in calculating
the future value of the instruments specified. These ranges of
values define the future states with respect to which the hedge,
state price vector and risk/reward profile will be created.” (See
Dembo at col. 5, lines 10–25). So, the replicating portfolio
disclosed by Dembo is very different than the supplemental
data defining a proxy portfolio recited in the claims, at a
minimum, because Dembo’s replicating portfolio is defined by
future states of uncertain parameters, while the Appellant’s
proxy portfolio is based on historical data to estimate a current
intra-day value. In other words, Dembo’s replicating portfolio
projects a future value of a portfolio based on future
characteristics of the parameters, while the Appellant’s proxy
portfolio estimates a current intraday value based on historical
data. Also, Kiron fails to cure the deficiencies of Dembo and
does not describe a proxy portfolio based on historical data.
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Appeal Br. 23.23
We are persuaded by Appellant’s arguments regarding the
deficiencies of Dembo. We also are persuaded of Examiner error because,
even if we were to assume that the Examiner set forth a proper prima facie
case of unpatentability under § 103, the Examiner contrarily finds “the
present invention solves a long existing but unsolved and unrecognized
need” (Final Act. 16), i.e., the Examiner acknowledges secondary
considerations that, without contradictory evidence, render the claims
nonobvious.24
Accordingly, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner’s reliance on the cited prior
art combination to teach or suggest the disputed limitations of independent
claims 1, 2, and 10, such that we find error in the Examiner’s resulting legal
conclusion of obviousness. Therefore, we do not sustain the Examiner’s
obviousness rejection of claims 1–6 and 10.
8. § 103 Rejection R8 of Claims 7–9
In light of our reversal of Rejection R7 of independent claim 2, supra,
we also reverse obviousness Rejection R8 of claims 7–9 under § 103, which
variously and ultimately depend from claim 2. On this record, the Examiner

23 We note the Examiner cites Feuerverger paragraph 49 as teaching or
suggesting that the set of risk factors comprise a historical time series of
data, and not Dembo or Kiron. Final Act. 16.
24 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant’s other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on “a
single dispositive issue”).
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has not shown how the additionally cited Makelainen reference overcomes
the aforementioned deficiencies with the combination of Dembo, Kiron, and
Feuerverger, as discussed above regarding claim 2.
CONCLUSIONS
(1) The Examiner erred with respect to written description
Rejection R1 of claims 1, 2, and 10 under 35 U.S.C. § 112, first paragraph,
and we do not sustain the rejection.
(2) The Examiner erred with respect to indefiniteness Rejections
R2 and R3 of claims 1, 2, and 10 under 35 U.S.C. § 112, second paragraph,
and we do not sustain the rejections.
(3) Under our Revised Guidance, governed by relevant case law,
claims 1–10 are not patent-ineligible under 35 U.S.C. § 101, and we do not
sustain Rejection R4.
(4) The Examiner did not err with respect to obviousness-type
double patenting Rejections R5 and R6 of claims 1–10 over the cited patent
claims of record, and we pro forma sustain the rejections.
(5) The Examiner erred with respect to obviousness Rejections R7
and R8 of claims 1–10 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we do not sustain the rejections.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1).
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DECISION SUMMARY
Claims
Rejected
35
U.S.C.
§
Basis /
References Affirmed Reversed
1, 2, 10 112, ¶ 1 Written Description 1, 2, 10
1, 2, 10 112, ¶ 2 Indefiniteness 1, 2, 10
1, 2, 10 112, ¶ 2 Indefiniteness 1, 2, 10
1–10 101 Subject Matter Eligibility 1–10
1–10 OTDP – over claims 1–17 of USP 7,822,678 1–10
1–10 OTDP – over claims 1–5 of USP 8,170,934 1–10
1–6, 10 103(a) Obviousness Dembo, Kiron, Feuerverger 1–6, 10
7–9 103(a)
Obviousness
Dembo, Kiron, Feuerverger,
Makelainen
7–9
Overall
Outcome 1–10
FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED