CROSTHWAITE, DOMINIC et al.

Patent Trials and Appeals Board

Jan 15, 2020

13209949 - (D) (P.T.A.B. Jan. 15, 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.
13/209,949 08/15/2011 DOMINIC CROSTHWAITE 03-6143-C1 1170
63710 7590 01/15/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
KAZIMI, HANI M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
01/15/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
lkorovich@cantor.com
patentdocketing@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DOMINIC CROSTHWAITE and LEWIS C. FINDLAY
____________

Appeal 2019-001811
Application 13/209,949
Technology Center 3600
____________

Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
GARTH D. BAER, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–8 and 10–19. We have jurisdiction over the
pending rejected claims under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Cantor Index, LLC as the real party in
interest. (Appeal Br. 3.)
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THE INVENTION
Appellant’s disclosed and claimed invention is directed to a trading
platform whereby a prospective user accesses a web site, applies for a credit
account, and begins trading activity, and in which the trading platform
determines a risk value for an order to trade a particular betting product.
(Spec. 4:5–9, 5:3–4.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A method, comprising:
receiving, by at least one processor, identification
information associated with a user from a remote device during
a communication session;
transmitting, by the at least one processor, a request for
credit information to one or more electronic databases, the
request including at least a portion of the identification
information;
receiving, by the at least one processor, the requested
credit information from the one or more electronic databases;
generating, by the at least one processor, an account
decision matrix in a memory;
generating, by the at least one processor, a credit check
rules table in the memory;
joining, by the at least one processor, the account
decision matrix and the credit check rules table;
identifying, by the at least one processor, a type of
account identified from a result of the join;
opening, by the at least one processor, an account of the
type identified from the result;
providing, by the at least one processor, the remote
device access to the opened account during the communication
session;
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receiving, by the at least one processor, from the remote
device a request to place a first order to trade a product and a
request to place a second order to trade a product, wherein the
product associated with the first order and the product
associated with the second order comprise a betting product;
determining, by the at least one processor, a risk value
for the first order and a risk value for the second order;
determining, by the at least one processor, whether to
approve the first order based at least in part on the risk value
determined for the first order and one or more balances for the
account, and whether to approve the second order based at least
in part on the risk value determined for the second order and the
one or more balances for the account,
if the first order is approved, transmitting, by the at least
one processor, the first order to an electronic exchange; and
if the second order is approved, transmitting by the at
least one processor the second order to the electronic exchange.
Appeal Br. 16–17. (Claims Appendix.)

REJECTION
The Examiner rejected claims 1–8 and 10–19 under 35 U.S.C. § 101
because the claims are directed toward a judicial exception (abstract idea)
without significantly more. (Final Act. 2.)
ISSUE ON APPEAL
Appellant’s arguments in the Appeal and Reply Briefs present the
following issue:2

2 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Appeal Brief (filed Aug. 27, 2018); the Reply
Brief (filed Dec. 31, 2018); the Final Office Action (mailed Mar. 5, 2018);
and the Examiner’s Answer (mailed Nov. 2, 2018) for the respective details.
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Whether the Examiner erred in finding claims 1–8 and 10–19 are
directed to a judicial exception without significantly more. (Appeal Br. 7–
14; Reply Br. 2.)
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner concludes exemplary claim 1 is patent-ineligible under
35 U.S.C. § 101 because claim 1 is directed to the abstract idea of
“establishing and providing access to a user’s account.” (Final Act. 3.) The
Examiner further concludes that there is nothing in the claims that is
significantly more than this abstract idea, given that the additional elements
“are simply a generic recitation of a processor performing its generic
computer functions” (Final Act. 5), and
the claim does not effect an improvement to another technology
or technical field and to the functioning of a computer itself;
and the claim does not move beyond a general link of the use of
an abstract idea to a particular technological environment.
(Final Act. 6.)
Appellant argues that “the claimed operations are akin to the filter tool
held eligible in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC
(Federal Circuit 2016) (‘Bascom’) because the claimed operations filter user
identification information.” (Appeal Br. 8; see also Appeal Br. 11–12.)
Appellant contends “the claimed operations perform a new function”
(Appeal Br. 9), relying on “the absence of prior art rejections” (Appeal Br.
9) and the disclosure’s statement that
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a trading platform may be operable to activate a new account
for a prospective user in real time or substantially in real
time.

(Appeal Br. 9, quoting Spec. 3:27–28, emphasis in original.) For the reasons
set forth below, we are not persuaded the Examiner erred.
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S. C. § 101. Here,
independent claim 1 and its dependent claims relate to a method, and
independent 12 and its dependent claims relate to an apparatus — i.e., a
process, or machine, respectively. However, the Supreme Court has long
held that “[l]aws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014) (quoting Assoc. for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 598–99 (2013)). The “abstract ideas” category embodies the
longstanding rule that an idea, by itself, is not patentable. Alice, 573 U.S. at
216–17.
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 217. The first step in the analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts,”
such as an abstract idea. Id. 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 v.
Kappos, 561 U.S. 593, 611 (2010); mathematical concepts (Parker v. Flook,
437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson,
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409 U.S. 63, 69 (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)); “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))).
If the claims are directed to a patent-ineligible concept, the second
step in the Alice/Mayo analysis is to consider the elements of the claims
“individually and ‘as an ordered combination”’ to determine whether there
are additional elements that “‘transform the nature of the claim’ into a
patent-eligible application.” 573 U.S. at 217 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other
words, the second step is to “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.”’ 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at
72–73.) 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. 573 U.S. at 221. A transformation into a
patent-eligible application requires more than simply stating the abstract idea
while adding the words “apply it.” Id.
Further to the Alice/Mayo analytical framework, after the mailing of
the Answer and the filing of the Brief in this case, the USPTO published
revised guidance on the application of Section 101. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
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(hereinafter “Revised Guidance”). Under the Revised Guidance, we first
look to whether the claim recites:
(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); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then look to whether
the claim:
(3) adds a specific limitation beyond the judicial exception that are 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.
See Revised Guidance.
In evaluating the claims at issue, we consider claim 1 as
representative, consistent with how Appellant and the Examiner analyze the
claims. See 37 C.F.R. § 41.37(c)(1)(iv)(2016). Omitting the portions of the
claim invoking use of generic technology (which are discussed separately
below), the remaining limitations of claim 1 elaborate on a method of
opening an account and approving or rejecting two orders, via the steps of:
(a) receiving . . . identification information associated with a
user . . . during a communication session;
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(b) transmitting . . . a request for credit information . . . the
request including at least a portion of the identification
information;
(c) receiving . . . the requested credit information . . .;
(d) generating . . . an account decision matrix . . .;
(e) generating . . . a credit check rules table . . .;
(f) joining . . . the account decision matrix and the credit
check rules table;
(g) identifying . . . a type of account identified from a result
of the join;
(h) opening . . . an account of the type identified from the
result;
(i) providing . . . the remote device access to the opened
account during the communication session;
(j) receiving . . . a request to place a first order to trade a
product and a request to place a second order to trade a product,
wherein the product associated with the first order and the
product associated with the second order comprise a betting
product;
(k) determining . . . a risk value for the first order and a risk
value for the second order;
(l) determining . . . whether to approve the first order based
at least in part on the risk value determined for the first order
and one or more balances for the account, and whether to
approve the second order based at least in part on the risk value
determined for the second order and the one or more balances
for the account,
(m) if the first order is approved, transmitting . . . the first
order to an electronic exchange; and
(n) if the second order is approved, transmitting . . . the
second order to the electronic exchange.

Apart from the use of generic technology (discussed further below),
each of these limitations describes steps taken using an applicant’s credit
information to open an account, and subsequently deciding whether to
approve two orders regarding a “betting product,” based on determined risk
values and account balances.
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As stated in the Revised Guidance, methods of organizing human
activity considered an abstract idea include “fundamental economic
principles or practices (including hedging, insurance, [and] mitigating risk);
[and] managing . . . interactions between people (including . . . following
rules or instructions).” (Revised Guidance, 84 Fed. Reg. at 52). The claim 1
subject matter of opening an account in which orders are related to a “betting
product,” and in which the decision to approve an order is based in part on a
“risk value,” falls under this description. See, e.g., Credit Acceptance v.
Westlake Services, 859 F.3d 1044, 1054 (Fed. Cir. 2017) (processing an
application for financing a purchase); Mortg. Grader, Inc. v. First Choice
Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (holding that claims
are abstract where they “recite nothing more than the collection of
information to generate a ‘credit grading’ and to facilitate anonymous loan
shopping”); 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.”)
Therefore, we agree with the Examiner that the subject matter of
claim 1 recites an abstract idea, as do the remaining claims.
Further pursuant to the Revised Guidance, we consider whether there
are additional elements set forth in claim 1 that integrate the judicial
exception into a practical application. Revised Guidance, 84 Fed. Reg. at
54–55. Here, the abstract idea of claim 1 is carried out using “at least one
processor” that interacts with “a remote device,” “one or more electronic
databases,” “a memory,” and “an electronic exchange.” These additional
elements do not integrate the judicial exception into a practical application,
because there is no improvement to technology, but rather application of
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preexisting technology to implement the abstract idea. “[M]erely requir[ing]
generic computer implementation[] fail[s] to transform that abstract idea into
a patent-eligible invention.” Mayo, 566 U.S. at 77.
Nor does the subject matter of claim 1 contain additional elements
that implement the judicial exception with a “particular machine,” because
the claims do not specify any details in regard to the processor. See MPEP
§ 2106.05(b). Further, the method does not transform matter; at best it
transforms information. See MPEP § 2106. 05(c). Nor does claim 1 have
any other meaningful limitations (MPEP § 2106. 05(e)), or any of the other
considerations set forth in the Revised Guidance regarding a determination
of whether additional elements integrate the judicial exception into a
practical application. See Revised Guidance, 84 Fed. Reg. at 55.
Accordingly, we conclude that the subject matter of claim 1 (and the
remaining claims) is directed to fundamental economic principles or
practices and managing personal behavior or relationships or interactions
between people, which are examples of the certain methods of organizing
human activity, and thus an abstract idea, and the additional elements recited
therein do not integrate the abstract idea into a practical application.
Turning to the second step of the Alice inquiry, we consider the
elements of the claims “individually and ‘as an ordered combination”’ to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” 573 U.S. at 217 (quoting
Mayo, 566 U.S. at 66, 79, 78 (2012)). We do not agree with Appellant that
additional elements of claim 1, whether individually or in combination, add
“significantly more” to the basic abstract idea encompassed by the claim
sufficient to transform the claimed abstract idea into a patent-eligible
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application. Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.”). As discussed above, Appellant submits that when
using the claimed subject matter, “a trading platform may be operable to
activate a new account for a prospective user in real time or substantially in
real time.” (Appeal Br. 9, quoting Spec. 3:27–28.) However, other than
using generic technology — a processor and a memory — these
improvements are elaborations on the basic abstract idea itself, in which
the prospective user need not mail any information (such as
identification information or credit information, for example) to
trading platform 20 when applying for a trading account

(Spec. 17:14–17), thus sparing the user from “delays associated with mailing
information to or from the account provider.” (Spec. 17:19–20.) “It is clear
from Mayo that the ‘inventive concept’ cannot be the abstract idea itself.”
Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359
(Fed. Cir. 2018). Moreover, “[p]atent law does not protect claims to an
‘asserted advance in the realm of abstract ideas . . . no matter how
groundbreaking the advance.”’ 890 F.3d at 1359 (Fed. Cir. 2018).
Appellant’s reliance on Bascom is unavailing. (Appeal Br. 8–10.)
There, the court held eligible claims directed to a technology-based solution
to filter Internet content that overcame existing problems with other Internet
filtering systems by making a known filtering solution — namely a “one-
size-fits-all” filter at an Internet Service Provider (ISP) — more dynamic
and efficient via individualized filtering at the ISP. Bascom, 827 F.3d at
1351. Notably, this customizable filtering solution improved the computer
system’s performance and, therefore, was patent-eligible. See id. But unlike
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the filtering system improvements in Bascom that added significantly more
to the abstract idea in that case, the claimed invention here uses generic
computing components to implement an abstract idea as noted previously,
when determining the creditworthiness of an applicant (see Figs. 3, 4A–B)
or the risk value for a proposed trade (see Figs. 5A–E).3
The record supports the Examiner’s finding that the additional
elements — a processor and a memory — are well-understood, routine,
conventional, and specified at a high level of generality. Revised Guidance,
84 Fed. Reg. at 56. There is no technical description of the “processor” in
the disclosure, other than to indicate the processor may reside in
a personal computer, workstation, network computer, wireless
data port, wireless telephone, personal digital assistant (PDA),
[or] cellular telephone.

(Spec. 10:16–18.) The disclosure further indicates that the “memory”
may take the form of volatile or non-volatile memory including,
without limitation, magnetic media, optical media, random
access memory (RAM), read-only memory (ROM), removable
media, or any other suitable local or remote memory
component.

(Spec. 14:8–10.) Nothing regarding any aspect of the “ordered
combination” of the claim elements provide significantly more than the
abstract idea that claim 1 is directed to.

3 With respect to the determination of the risk value for a proposed trade, the
disclosure does not indicate a technical benefit, but instead states that “such
risk values [] may allow the user to place more trading orders [] than would
otherwise be allowed, resulting in increased liquidity and thus increased
profits for [the] trading platform.” (Spec. 18:2–4, emphasis added.)
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Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claim 1. Appellant provides no arguments that would differentiate the
remaining claims from claim 1. Thus, the foregoing analysis of claim 1 is
exemplary of that for independent claim 12 and dependent claims 2–8, 10,
11, and 13–19. See 37 C.F.R. § 41.37(c)(1)(iv) (2016). Therefore, we also
sustain the Examiner’s 35 U.S.C. § 101 rejection of those claims.

CONCLUSION
For the reasons stated above, we affirm the Examiner’s non-statutory
subject matter rejection of claims 1–8 and 10–19.

DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–8, 10–19 101 non-statutory subject matter 1–8, 10–19

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)(1)(iv).

AFFIRMED