Howard W. Lutnick et al.

Patent Trials and Appeals Board

Dec 17, 2019

11213601 - (D) (P.T.A.B. Dec. 17, 2019)

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.
11/213,601 08/26/2005 Howard W. Lutnick 04-1103 2004
63710 7590 12/17/2019
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
NORMAN, SAMICA L
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
12/17/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
lkorovich@cantor.com
patentdocketing@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOWARD W. LUTNICK, MICHAEL SWEETING, and
JOSEPH NOVIELLO

Appeal 2018–005520
Application 11/213,601
Technology Center 3600

Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 28–32, 35–40, and 78. 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 BGC Partners, Inc.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claimed subject matter “relates to the allocation, collection and
distribution of commissions received from the trading of financial
instruments in electronic trading systems” (Spec., para. 2). Claim 78,
reproduced below, is illustrative of the claimed subject matter with emphasis
added:
78. An electronic trading system comprising:
a computing device;
a network link that couples the computing device to a
plurality of workstations, each of the workstations configured to
present a trading interface relating to a financial instrument with
the computing device;
a non-transitory medium on which a plurality of
instructions are stored that when executed by the computing
device, cause the electronic trading system to determine a first
commission for orders for the financial instrument on a price
based on a lack of available liquidity at the price;
in response to determining the first commission, populate
a first trading interface of a first workstation with a first trading
quad indicating a lack of available liquidity for the financial
instrument and a first cost for orders at the price based on the
price adjusted by the first commission;
in response to input into the first trading quad, receive,
through the network link from the first workstation, a first order
to buy or sell the financial instrument at the price, the first order
received at a first time;
in response to receiving the first trade command,
determine a second commission for orders at the price on the
same trading side as the first order based on the first order
providing available liquidity at the price, in which the second
commission is less advantageous than the first commission;
in response to determining the second commission,
populate a second trading interface of a second workstation with
a second trading quad indicating available liquidity that
includes the first order for the financial instrument at the price
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and a second cost for orders at the price based on the price
adjusted by the second commission;
in response to receiving the first trade command,
determine a third commission for counter orders to the first order
based on the first order providing available liquidity at the price,
in which the third commission is less advantage than the first
commission;
in response to determining the third commission, populate
a third trading interface of a third workstation with a third
trading quad indicating available liquidity that includes the first
order for the financial instrument at the price and a third cost
for orders at the price based on the price adjusted by the third
commission;
in response to input into the second trading quad, receive,
through the network link from the second workstation, a second
order that is on the same trading side as the first order for the
financial instrument, the second order received at a second time,
the first time being earlier than the second time;
in response to input into the third trading quad, receive,
through the network link from the third workstation, a third
order that is counter to the first order for the financial
instrument, the third order received at a third time, the first time
being earlier than the third time;
in response to receiving the third order, match the first
order and third order;
in response to matching the first order and third order,
execute a trade for the financial instrument fulfilling at least a
portion of the first order and third order; and
in response to executing the trade, applying the first
commission to the first order and applying the third commission
to the third order.
REJECTION
Claims 28–32, 35–40, and 78 are rejected under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter.
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OPINION
The Appellant argued these claims as a group. See Appeal Br. 5–10.
We select claim 78 as the representative claim for this group, and the
remaining claims 28–32 and 35–40 stand or fall with claim 78. 37 C.F.R.
§ 41.37(c)(1)(iv).
Preliminary comment
Appellant challenges the Examiner’s position on the ground that it
does not abide by prior guidance. See e.g., Appeal Br. 6:
PTO guidelines that are binding on the Office require that the
Office compare the claims and the allegedly abstract idea to case
law where similar claims have been deemed abstract to make a
lawful determination that the claims are directed to an abstract
idea. The examiner has identified zero cases with respect to this
first analysis and the idea of “rewarding.”
However, previous guidance on patent subject matter eligibility have been
superseded by the 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019), hereinafter “2019 Revised 101 Guidance”.
Id. at 51 (“Eligibility–related guidance issued prior to the Ninth Edition, R–
08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”)
Accordingly, we will not address arguments on the sufficiency of the
Examiner’s position relative prior guidance but rather our analysis that
follows will comport with the 2019 Revised 101 Guidance.

Introduction
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor.”
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In that regard, claim 78 covers an “apparatus” and is thus statutory
subject matter for which a patent may be obtained.2 This is not in dispute.
However, the § 101 provision “contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In that regard, notwithstanding claim 78 covers statutory subject
matter, the Examiner has raised a question of patent–eligibility on the
ground that claim 78 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Id. at 217.
Alice step one – the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Id. at 218
(emphasis added).
The Examiner determined that claim 78
recites the steps of receiving and matching trades, determining a
commission or reward based on the trade and indicating available
liquidity. This is simply the organization and manipulation of
data which can be performed mentally and is an idea of itself and
a concept relating to a fundamental economic practice. It is
similar to other concepts that have been identified as abstract by

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether “the claim is to a statutory category.” Id. at 53.
See also sentence bridging pages 53 and 54 (“consider[ ] whether the
claimed subject matter falls within the four statutory categories of patentable
subject matter identified by 35 U.S.C. 101. . .”).
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the courts, such as comparing new and stored information and
using rules to identify options in SmartGene [SmartGene, Inc. v.
Advanced Biological Labs., SA, 555 F.App’x. 950 (Fed. Cir.
2014).] or creating a contractual relationship in buySafe
[buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014).].
Therefore, the claim is directed to an abstract idea.
Final Rej. 5–6.
Appellant argues that “claims clearly add functionality to a computer
that was previously not available and therefore are not directed to an abstract
idea” (Appeal Br. 7). See also id. at 7–8:
Applicants claims, like the claim in Trading Technology, Inc v
CQG, Inc. [Trading Technologies International, Inc. v. CQG,
Inc., 675 F.App’x. 1001 (Fed. Cir. 2017).], present a
nonconventional improvement to trading technology that
increase the efficiency and usability of trading systems. These
claims are therefore not directed to an abstract idea. The claims,
as the claims in Enfish [Enfish, LLC v. Microsoft Corp., 822
F.3d 1327 (Fed. Cir. 2016).], are directed to added functionality
that improves computerized trading. These claims clearly add
functionality to a computer that was previously not available as
is evidenced by the lack of any prior art rejection. The modern
era of electronic trading holds computerized trading interfaces
and marketplaces as a central technology. The efficiency, speed
and accuracy of operation of these systems is an ongoing area
of research and development. These computer systems are a
cutting edge of technological innovation in security and
efficiency.
Accordingly, there is a dispute over whether claim 78 is directed to an
abstract idea. Specifically, is claim 78 directed to receiving and matching
trades, determining a commission or reward based on the trade and
indicating available liquidity (Final Act. 6) or a nonconventional
improvement to trading technology (Appeal Br. 7)?
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Claim Construction3
We consider the claim as a whole4 giving it the broadest reasonable
construction5 as one of ordinary skill in the art would have interpreted it in
light of the specification6 at the time of filing.
Claim 78 calls for an electronic trading system for comprising (1) a
computing device; (2) a network link; (3) a plurality of workstations; (4) an
interface; and (5) a non-transitory medium.

3 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
determination under § 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).

4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).

5 2019 Revised 101 Guidance, page 53, footnote 14 (“If a claim, under its
broadest reasonable interpretation . . . .”)

6 “First, it is always important to look at the actual language of the claims.
… Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1387 (Fed. Cir.
2017) (J. Linn, dissenting in part and concurring in part), citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), among others.

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Specifically, the network link (2) couples the computing device (1) to
the plurality of workstations (3); the plurality of workstations (3) are
configured to present an interface (4); the interface (4) is a “trading interface
relating to a financial instrument with the computing device”; and the non-
transitory medium (5) stores “a plurality of instructions . . . that when
executed by the computing device [(1)], cause the electronic trading system
to” perform the following 12 functions:
1. “determine” A;
2. “in response to determining” A, “populate a first trading
interface of a first workstation with” B;
3. “in response to input into” B, “receive, through the
network link from the first workstation,” C; C “received at
a first time”;
4. “in response to receiving” C, “determine” D;
5. “in response to determining” D, “populate a second
trading interface of a second workstation with” E;
6. “in response to receiving” C, “determine” F;
7. “in response to determining” F, “populate a third trading
interface of a third workstation with” G;
8. “in response to input into” E, “receive, through the
network link from the second workstation” H, H “received
at a second time, the first time being earlier than the second
time”;
9. “in response to input into” G, “receive, through the
network link from the third workstation,” I; I “received at
a third time, the first time being earlier than the third time”;
10. “in response to receiving” I, “match” C and I;
11. “in response to matching” C and I, “execute a trade for the
financial instrument fulfilling at least a portion of” C and
I; and
12. “in response to executing the trade, applying” A to C and
applying F to I;
where,
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A is “a first commission for orders for the financial
instrument on a price based on a lack of available liquidity at the
price”;
B is “a first trading quad indicating a lack of available
liquidity for the financial instrument and a first cost for orders at
the price based on the price adjusted by” A;
C is “a first order to buy or sell the financial instrument at
the price”;
D is “a second commission for orders at the price on the
same trading side as [C] based on [C] providing available
liquidity at the price, in which the second commission is less
advantageous than the [A]”;
E is “a second trading quad indicating available liquidity
that includes the [C] at the price and a second cost for orders at
the price based on the price adjusted by [D]”;
F is “a third commission for counter orders to [C] based
on the [C] providing available liquidity at the price, in which the
third commission is less advantage than [A]”;
G is “a third trading quad indicating available liquidity that
includes the [C] at the price and a third cost for orders at the price
based on the price adjusted by [F]”;
H is “a second order that is on the same trading side as the
[C]”; and,
I is “a third order that is counter to [C]”
Claim 78 is reasonably broadly construed as covering a system
comprising a plurality of workstations coupled to a computing device via a
network link and configured to present a trading interface and a non-
transitory medium storing instructions to practice a scheme for executing a
trade for a financial instrument that fulfills certain orders and in response to
said execution applying certain commissions to said orders.
The Specification states that the invention “relates to the allocation,
collection and distribution of commissions received from the trading of
financial instruments in electronic trading systems.” Spec., para. 2.
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More particularly, the present invention relates to determining
and displaying of commissions charged for trading various
tradable items including financial instruments, such as interest-
rate-related instruments, equity instruments, derivatives thereof,
etc.
Spec., para. 2. See also paras. 4–6:
[E]lectronic matching systems have not significantly impacted
the issues of formalizing, determining and allocating the
commissions or fees charged to various buyers and sellers who
participate in different aspects of the trading processes through
their transactions. Moreover, the trading logic used by such
systems or platforms (which operates similarly to a voice
broker in non-electronic trading) typically does not allow for
the full disclosure of such commissions and fees to users until
after trades have been processed or confirmed.

It would be therefore desirable to provide systems and
methods for the electronic trading of such items that implement
sophisticated commission allocations in transaction
management of items being traded and that fully and clearly
disclose, in real- time, the brokerage fees charged to the
participants prior to final settlement.

Summary of the Invention

Therefore, it is an object of the invention to provide
systems and methods for the electronic trading of such items
that implement sophisticated commission allocations in
transaction management of items being traded and that fully
and clearly disclose, in real-time, the brokerage fees charged to
the participants prior to final settlement.
Given the system as claimed as reasonably broadly construed above
and in light of the Specification’s description of the invention as being
related to determining and displaying of commissions charged for trading
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various tradable items, based on the record before us, we reasonably broadly
construe claim 78 as being directed to a scheme for allocating commissions
to orders in the execution of a trade for a financial instrument in a networked
environment.
The Abstract Idea7
Above, where we reproduce claim 78, we identify in italics the
limitations we believe recite an abstract idea.8 Based on our claim
construction analysis (above), we determine that the identified limitations
describe a scheme for allocating commissions to orders in the execution of a
trade for a financial instrument in a networked environment. Allocating
commissions to orders in the execution of a trade for a financial instrument,
is a commercial interaction. It falls within the enumerated “Certain methods
of organizing human activity” as grouping of abstract ideas set forth in the
2019 Revised 101 Guidance.9

7 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. Step 2A is two prong inquiry.

8 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. “To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the claim
under examination (individually or in combination) that the Examiner
believes recites an abstract idea . . . .” Id. at 54.

9 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
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Improvement In the Functioning of a Computer10 (Appellant’s
Argument)
The Examiner’s characterization of what the claim is directed to is
similar to ours, albeit at a lower level of abstraction. “An abstract idea can
generally be described at different levels of abstraction.” Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Cf. Id. at 1241 (The

[2019 Revised 101 Guidance].” Id. at 54. This case implicates subject matter
grouping “(b)”:
(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);
Id. at 52.

10 This corresponds to Prong Two [“If the Claim Recites a Judicial
Exception, Evaluate Whether the Judicial Exception Is Integrated Into a
Practical Application”] of Step 2A of the 2019 Revised 101 Guidance. “A
claim that integrates a judicial exception into a practical application will
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Id. at 54. One
consideration, implicated here, that is “indicative that an additional element
(or combination of elements) may have integrated the exception into a
practical application” (id., at 55) is if “[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).

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Board’s “slight revision of its abstract idea analysis does not impact the
patentability analysis.”)
We have reviewed the record and are unpersuaded as to error in our or
the Examiner’s characterization of what claim 78 is directed to.
A principle argument Appellant makes is that the claimed subject
matter is not directed to an abstract idea but rather to “a non-conventional
improvement to trading technology that increase the efficiency and usability
of trading systems.” Appeal Br. 7–8.
The record does not adequately support the argument that the claimed
system provides a technical improvement. Appellant argues that claim 78
provides for an added “functionality to a computer that was previously not
available,” which is “a cutting edge of technological innovation in security
and efficiency.” Id. The record does not suggest any such added computer
functionality. The Specification does not describe the claimed system as
providing additional computer functionality that “increase[s] the efficiency
and usability of trading systems.” Id. 7–8. No technical improvement is
mentioned. Rather, the Specification discloses only non-technical
improvements, such as a better trading experience for participants. See e.g.,
para. 16 (“Disclosing the commission or reward prior to the execution of a
trade paints a better picture of the full costs involved, thereby giving
participants an improved opportunity to consider whether or not to
participate in the trade.”) See also para. 6 (“electronic trading of such items
that implement sophisticated commission allocations in transaction
management of items being traded and that fully and clearly disclose, in
real-time, the brokerage fees charged to the participants prior to final
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settlement.”) These improvements may help traders to make quicker
decisions but that alone is insufficient to show that there is an improvement
to trading systems or trading technology. Appellant’s technical improvement
argument is unpersuasive as to error in the Examiner’s or our
characterization of what the claim is directed to because the record evidence
fails to support it. Appellant’s attorney’s arguments in a brief can not take
the place of evidence in the record. See generally, In re Glass, 474 F.2d
1015, 1019 (CCPA 1973). Also see In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984);
Meitzner v. Mindick, 549 F.2d 775 (CCPA 1977), and In re Schulze, 346
F.2d 600, 602 (1965).
We note Appellant’s citation of Trading Technologies International,
Inc. v. CQG, Inc., 675 F.App’x. 1001 (Fed. Cir. 2017) as “the most relevant
case to the pending claims.” Appeal Br. 7. This is a non-precedential
decision. Please see instead the precedential Trading Technologies
International, Inc. v. IBG LLC, 921 F.3d 1378 (Fed. Cir. 2019). It makes the
same point we make above; that is, here the evidence weighs in favor of the
view that the claim’s focus is on nontechnical improvements. Id. at 1384
(“The claims are focused on providing information to traders in a way that
helps them process information more quickly, ‘556 patent at 2:26–39, not on
improving computers or technology.”)
We have carefully reviewed the claim. Per our previous claim
construction analysis, claim 78 is reasonably broadly construed as covering a
system comprising a plurality of workstations coupled to a computing device
via a network link and configured to present a trading interface and a non-
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transitory medium storing instructions to practice a scheme for executing a
trade for a financial instrument that fulfills certain orders and in response to
said execution applying certain commissions to said orders. We see no
specific asserted improvement in computer capabilities recited in the claim.
Nor does the Specification discuss any. Rather than being directed to any
specific asserted improvement in computer capabilities, the claim and
specification support the opposite view – that the claimed subject matter is
directed to a scheme for allocating commissions to orders in the execution of
a trade for a financial instrument in a networked environment, an
environment that was well known at the time the application was filed. See
Spec., paras. 16–23.
The claim provides no additional structural details11 that would
distinguish any of the recited (1) a computing device; (2) a network link; (3)
a plurality of workstations; (4) an interface; and (5) a non-transitory medium
from those that were well known at the time the application was filed. See
Spec., paras. 16–25.
With respect to the “determine,” “input”, “populate”, “receive” and
“matching” functions, among others, the Specification attributes no special
meaning to any of these operations, individually or in the combination as
claimed. In our view, consistent with the Specification, these are common
processing functions that one of ordinary skill in the art at the time of the

11 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F.App’x. 950, 954 (Fed.
Cir. 2018) (Non-precedential). “Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”
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invention would have known generic computers were capable of performing
and would have associated with generic computers. Cf. OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015):
Beyond the abstract idea of offer-based price optimization, the claims
merely recite “well-understood, routine conventional activit[ies],”
either by requiring conventional computer activities or routine data-
gathering steps. Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at
1294) (alterations in original). . . . For example, claim 1 recites
“sending a first set of electronic messages over a network to devices,”
the devices being “programmed to communicate,” storing test results
in a “machine-readable medium,” and “using a computerized system
... to automatically determine” an estimated outcome and setting a
price. Just as in Alice, “all of these computer functions are ‘well-
understood, routine, conventional activit[ies]’ previously known to the
industry.” Alice, 134 S.Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294)
(alterations in original); see also buySAFE[, Inc. v. Google, Inc.], 765
F.3d [1350,] 1355 [(Fed. Cir. 2014)] (“That a computer receives and
sends the information over a network—with no further specification—
is not even arguably inventive.”).
At best, the system distinguishes over other generic computers known
at the time the application was filed in the type of electronic information
being processed – that is, for example, commissions and orders. But that
alone is not patentably consequential. This is so because “[c]laim limitations
directed to the content of information and lacking a requisite functional
relationship are not entitled to patentable weight because such information is
not patent eligible subject matter under 35 U.S.C. § 101.” Praxair
Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd., 890 F.3d 1024,
1032 (Fed. Cir. 2018).
Accordingly, within the meaning of the 2019 Revised 101 Guidance,
we find there is no integration of the abstract idea into a practical
application.
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We have considered Appellant’s other arguments challenging the
Examiner’s determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner’s determination that claim 78 is directed to an abstract idea.

Alice step two – Does the Claim Provide an Inventive Concept?12
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined that the:
The claim recites the additional limitations of using an
electronic trading system to receive trade information. The
electronic trading system simply performs the generic computer
functions of receiving. Generic computers performing generic
computer functions, alone, do not amount to significantly more
than the abstract idea. Viewing the limitations as an ordered
combination does not add anything further than looking at the
limitations individually. When viewed either individually, or as
an ordered combination, the additional limitations do not

12 This corresponds to Step 2B of the 2019 Revised 101 Guidance (see p.
56).

[I]f a claim has been determined to be directed to a judicial exception
under revised Step 2A, examiners should then 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).
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amount to a claim as a whole that is significantly more than the
abstract idea.
Final Act. 6. We agree.
We addressed the matter of whether there were any purported specific
asserted improvements in computer capabilities in our analysis above under
step one of the Alice framework. This is consistent with the case law. See
Ancora, 908 F.3d at 1347 (“We have several times held claims to pass
muster under Alice step one when sufficiently focused on such
improvements.”) Such an argument can also challenge a determination under
step two of the Alice framework. See buySAFE, 765 F.3d at 1354–55.
“[R]ecent Federal Circuit jurisprudence has indicated that eligible subject
matter can often be identified either at the first or the second step of the
Alice/Mayo [framework].” 2019 Revised 101 Guidance at 53; see also id. n.
17.
Be that as it may, we are unpersuaded that claim 78 presents an
element or combination of elements indicative of a specific asserted
improvement in computer capabilities, thereby rendering the claimed subject
matter sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon a scheme for allocating commissions to orders in
the execution of a trade for a financial instrument in a networked
environment itself.
We have reviewed the Specification and, as explained above, we can
find no suggestion of any improvements to the system as a result of
performing the functions as broadly as they are recited.
We cited the Specification in our earlier discussion. It is intrinsic
evidence that the claimed (1) a computing device; (2) a network link; (3) a
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plurality of workstations; (4) an interface; and (5) a non-transitory medium,
individually and in the arrangement as claimed are conventional. In doing
so, we have followed “Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP Inc.[, 881 F.3d 1360 (Fed. Cir. 2018)],” USPTO
Memorandum, Robert W. Bahr, Deputy Commissioner For Patent
Examination Policy, April 19, 2018 (the “Berkheimer Memo”)).
The court in Berkheimer held that “[t]he patent eligibility inquiry may
contain underlying issues of fact.” Berkheimer, 881 F.3d at 1365 (quoting
Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016) (“The § 101 inquiry ‘may contain underlying factual
issues.”’)). But the court also held that “[w]hen there is no genuine issue of
material fact regarding whether the claim element or claimed combination is
well-understood, routine, [and] conventional to a skilled artisan in the
relevant field, this issue can be decided on summary judgment as a matter of
law.” Id. at 1368 (emphasis added). This qualification has been subsequently
reiterated.
If there is a genuine dispute of material fact, Rule 56 requires
that summary judgment be denied. In Berkheimer, there was
such a genuine dispute for claims 4–7, but not for claims 1–3
and 9 . . . . [I]n accordance with Alice, we have repeatedly
recognized the absence of a genuine dispute as to eligibility for
the many claims that have been defended as involving an
inventive concept based merely on the idea of using existing
computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.
Berkheimer v. HP Inc., 890 F.3d 1369, 1371–73 (Fed. Cir. 2018) (Order, On
Petition for rehearing en banc, May 31, 2018); see also Aatrix Software, Inc.
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v. Green Shades Software, Inc., 890 F.3d 1354, 1368 (Fed. Cir. 2018) (“A
factual allegation or dispute should not automatically take the determination
out of the court’s hands; rather, there needs to be justification for why
additional evidence must be considered—the default being a legal
determination.”).
Here, the Specification indisputably shows the recited (1) a computing
device; (2) a network link; (3) a plurality of workstations; (4) an interface;
and (5) a non-transitory medium, individually and in the ordered
combination as claimed, were conventional at the time of filing. See e.g.,
para. 21 (“A typical workstation 110 may include processor 111, display
112, input device 113, and memory 114, which may be interconnected.”)
Accordingly, no genuine issue of material fact exists as to the well–
understood, routine, or conventional nature of the claimed system as
claimed.
Appellant argues that “the claims clearly recite improvements to
technology of computerized and networked trading and interfaces. Among
other things, speed, interface efficiency, and data integrity are all
technological improvements addressed by the claims that are
rooted in computers and networking.” Appeal Br. 9. But, again, we have
been unable to find sufficient supporting evidence. Such improvements
could indeed transform claimed subject matter that is otherwise directed to
an abstract idea into something significantly more. But the difficulty here is
that the record insufficiently shows it.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
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that claim 78 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into an inventive application.
We have considered all of the Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 78, and claims 28–32 and 35–40
which stand or fall with claim 78, are directed to an abstract idea and do not
present an “inventive concept,” we sustain the Examiner’s conclusion that
they are directed to patent-ineligible subject matter for being judicially-
excepted from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc., 656
F.App’x. 991, 997 (Fed. Cir. 2016) (“We have considered all of
LendingTree’s remaining arguments and have found them unpersuasive.
Accordingly, because the asserted claims of the patents in suit are directed to
an abstract idea and do not present an ‘inventive concept,’ we hold that they
are directed to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g.,
OIP Techs., 788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1098 (Fed. Cir. 2016).
CONCLUSION
The decision of the Examiner to reject claims 28–32, 35–40, and 78 is
affirmed.
More specifically:
The rejection of claims 28–32, 35–40, and 78 under 35 U.S.C. § 101
as being directed to judicially-excepted subject matter is affirmed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
28–32, 35–
40, 78
101 Eligibility 28–32, 35–
40, 78

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