Howard W. Lutnick et al.

Patent Trials and Appeals Board

Dec 31, 2019

10615721 - (D) (P.T.A.B. Dec. 31, 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.
10/615,721 07/08/2003 Howard W. Lutnick 03-1082 9421
63710 7590 12/31/2019
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
MADAMBA, CLIFFORD B
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
12/31/2019 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 and MICHAEL SWEETING
____________

Appeal 2018-008834
Application 10/615,721
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, ERIC S. FRAHM, and
KRISTEN L. DROESCH, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 119, 124, 125, 144, 146, 147, and 148. Claims 1–118, 120–123,
126–143, 145, and 149 are canceled.2 We have jurisdiction over the pending
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(a). According to Appellant, the real party in interest is BGC
Partners, Inc. See Appeal Br. 3.

2 Appellant indicates claims “126–144 (canceled).” Appeal Br. 11. We
treat this as a typographical error that was intended to read claims “126–143
(canceled)” because claim 144 is included in the Claims Appendix,
immediately below “126–144 (canceled).” Appeal Br. 11. In the event of
further prosecution, we leave it to the Examiner to require appropriate
correction by an amendment to the claims.
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STATEMENT OF THE CASE
Introduction
Embodiments of Appellant’s invention relate to “the trading of futures
and/or options contracts for non-traditionally traded items or markets.”
Spec. ¶ 1.

Rejection
Claims 119, 124, 125, 144, 146, 147, and 148 are rejected under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more. Final Act. 6.
Issue on Appeal
Did the Examiner err in rejecting claims 119, 124, 125, 144, 146, 147,
and 148 under 35 U.S.C. § 101, as being directed to a judicial exception,
without significantly more? 3
ANALYSIS
We reproduce infra independent Claim 119 in Table One. We have
considered all of Appellant’s arguments and any evidence presented. To the
extent Appellant has not advanced separate, substantive arguments for
particular claims, or other issues, such arguments are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).

3 The Examiner withdrew the rejection(s) under 35 U.S.C. §103(a). See
Final Act. 5.
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Principles of Law — 35 U.S.C. § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “‘[L]aws of nature, natural phenomena, and abstract
ideas’ are not patentable.” Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (quoting 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.”).
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 of rubber products” (Diehr, 450 U.S. at 191 “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
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(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68
(1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane
v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation 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.
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Subject Matter Eligibility — 2019 Revised Guidance
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). This
new guidance is applied in this Opinion. Under the 2019 Revised Guidance,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, mental processes,
or certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people);4 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).5, 6
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. Id.
Only if a claim: (1) recites a judicial exception and (2) does not

4 Referred to as “Step 2A, Prong One” in the Revised Guidance (hereinafter
“Step 2A, Prong One”).
5 Referred to as “Step 2A, Prong Two” in the Revised Guidance (hereinafter
“Step 2A, Prong Two”).
6 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18.
For example, we 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, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.7
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Because there is no single definition of an “abstract idea” under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the “abstract idea” exception includes the
following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes— concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. 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

7 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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social activities, teaching, and following rules or
instructions).
See 2019 Revised Guidance, 84 Fed. Reg. at 52.
According to the 2019 Revised Guidance, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular
article to a different state or thing — see MPEP
§ 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological
environment, such that the claim as a whole is more than
a drafting effort designed to monopolize the exception
— see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses a
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computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
2019 Revised Guidance, Step 2A, Prong One8
The Judicial Exception
Under the 2019 Revised Guidance, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.
The Examiner concludes that claims 119, 124, 125, 144, 146, 147, and
148 recite an abstract idea, because the claims describe:
steps for facilitating the execution of a futures contract
transaction. The scheme and/or concept is similar to other
concepts that have been identified by the courts as abstract, such
as a fundamental economic practice (e.g., concepts relating to the
economy and commerce; performance of financial transactions),
as well as an idea of itself (e.g., mental process that can be
performed in the human mind, by a human manually; collecting
and comparing known information as in Classen; analyzing
information by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially mental
processes as in Electric Power Group; data recognition and
storage as in Content Extraction), and mathematical

8 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).

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relationships and/or formulas (e.g., mathematical concepts,
algorithms, relationships, formulas, calculations as in Flook).
Final Act. 6–7.
In Table One below, we identify in italics the specific claim
limitations that we conclude recite an abstract idea. We identify in bold the
additional (non-abstract) claim limitations that are generic computer
components. We identify any “automatically” performed steps using
underlined text.
TABLE ONE
Independent Claim 119 2019 Revised Guidance
[a] A method comprising: A method falls under the statutory
subject matter class of a process.
See 35 U.S.C. § 101 (“Whoever
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, subject to the
conditions and requirements of this
title.”).

[b] electronically, by the
processor, 9 capturing
intellectual property assets
data;
Capturing intellectual property assets
data is an insignificant extra-solution
activity (i.e., data gathering). 2019
Revised Guidance, 55 n.31; see also
MPEP § 2106.05(g).
The processor is an additional non-
abstract limitation.

9 We note there is no antecedent basis for “the processor” in method
claim 1, step “b.”
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Independent Claim 119 2019 Revised Guidance
[c] electronically, by the
processor, compiling the
intellectual property assets
data into an index of non-
traditionally traded items;

Compiling the intellectual property
assets data into an index of non-
traditionally traded items is
insignificant extra-solution activity.
2019 Revised Guidance, 55 n.31; see
also MPEP § 2106.05(g).
The processor is an additional non-
abstract limitation.

[d] populating, by a
processor, an options screen
market information pertaining
to the index of non-
traditionally traded items, in
which the index of non-
traditionally traded items
includes an index of
intellectual property assets, in
which the options screen
displays:
Populating market information
pertaining to the index of non-
traditionally traded items on an
options screen is insignificant extra-
solution activity. 2019 Revised
Guidance, 55 n.31; see also MPEP
§ 2106.05(g).
The processor and the options screen
are additional non-abstract
limitations.
[e] a highest sale or purchase
price for the futures contract,
Price data.
[f] a lowest sale or purchase
price for the futures contract,
and
Price data.
[g] a total quantity of futures
contracts that have been
transacted;
Quantity data.
[h] receiving, by the
processor in response to input
in the options screen, a
request from a user to
transact a futures contract
from a plurality of futures
contracts that are displayed
on the options screen,
Abstract idea: Receiving a request
from a user to transact a futures
contract from a plurality of futures
contracts that are displayed on the
options screen is a fundamental
economic practice including the
subcategories of hedging, mitigating
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Independent Claim 119 2019 Revised Guidance
risk, and including commercial
interactions such as agreements in
the form of contracts, sales activities
or behaviors and business relations
that could also be performed
alternatively as a mental step. See
2019 Revised Guidance 52.
The options screen is an additional
non-abstract limitation.
[i] in which the index is tied
to a portfolio comprising at
least one company, in which
the at least one company is
automatically10selected based
on a pre-determined criteria;
Abstract Idea: selecting based on a
pre-determined criteria could be
performed alternatively as a mental
process. See 2019 Revised Guidance
52.

[j] in which the user is on a
remote device that is in
electronic communication
with the processor over a
network;
Electronic communication is
insignificant extra-solution activity.
2019 Revised Guidance, 55 n.31; see
also MPEP § 2106.05(g).
The remote device, the processor,
and the network are additional non-
abstract limitations.
[k] computing, by the
processor, a value of the
futures contract based on the
performance and a weight
that is assigned to each
Abstract Idea: Computing a value of
the futures contract based on the
performance and a weight that is
assigned to each company of the
portfolio is a mathematical

10 See Trading Technologies International, Inc. v. IBG LLC, 921 F.3d 1378,
1384 (Fed. Circ. 2019)(“‘mere automation of manual processes using
generic computers’ . . . ‘does not constitute a patentable improvement in
computer technology.’”) (quoting Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)) (emphasis added).

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Independent Claim 119 2019 Revised Guidance
company of the portfolio, in
which the weight that is
assigned to each company in
the portfolio is automatically
determined based on a pre-
determined criteria, in which
computing the value of the
futures contract is further
based on at least one of:
relationship that could be performed
alternatively as a mental process
with the aid of pen and paper.11 See
2019 Revised Guidance 52.

Abstract Idea: The determining of
the weight that is assigned to each
company based on a pre-determined
criteria is a mathematical
relationship that could be performed
alternatively as a mental process
with the aid of pen and paper.12 See
2019 Revised Guidance 52.

The processor is an additional non-
abstract limitation.
[l] an age of at least one
intellectual property asset of
the index,
Age data.
[m] a quantity of successful
litigations based on at least
one the intellectual property
asset of the index,
Quantity data.

11 If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under § 101. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372–73 (Fed. Cir. 2011); “That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.” CyberSource, 654
F.3d at 1375. See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146–47 (Fed. Cir. 2016).

12 See supra, n.10. (automation of manual processes using generic
computers).

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Independent Claim 119 2019 Revised Guidance
[n] an amount of licensing
revenue generated by at least
one the intellectual property
asset of the index, and
Amount of licensing revenue data.
[o] a quantity of citations to
at least one the intellectual
property asset of the index;
Quantity data.
[p] executing, by the
processor, a transaction of
the futures contract for an
amount of money that is
equivalent to the computed
value; and
Abstract idea: Executing a
transaction of the futures contract for
an amount of money that is
equivalent to the computed value is a
fundamental economic practice
including the subcategories of
hedging, mitigating risk, and
including commercial interactions
such as agreements in the form of
contracts, sales activities or
behaviors and business relations that
could also be performed alternatively
as a mental step. See 2019 Revised
Guidance 52.
The processor is an additional non-
abstract limitation.
[q] transmitting, by the
processor to a remote
device, an indication that the
futures contract is to be
exchanged at a future date for
the amount of money.
Transmitting an indication that the
futures contract is to be exchanged at
a future date for the amount of
money is insignificant post-solution
activity. 2019 Revised Guidance, 55
n.31; see also MPEP § 2106.05(g).
The processor and the remote device
are additional non-abstract
limitations.

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Abstract Ideas — Mental Processes
and Fundamental Economic Practices

After considering representative claim 119 as a whole, we conclude
the recited italicized functions shown in Table One implement a
fundamental economic practice that falls into the subcategories of hedging
and mitigating risk (using futures contracts), and including commercial
interactions such as agreements in the form of contracts, sales activities or
behaviors and business relations that could also be performed alternatively
as a mental process. 13 See 2019 Revised Guidance, 84 Fed. Reg. at 52. See
also “Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (‘[W]ith the exception of generic computer-implemented
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper.’).” 2019
Revised Guidance, 84 Fed. Reg. at 52 n.14.
“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). Merely combining several abstract ideas does not render the
combination any less abstract. See RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to

13 “Using a computer to accelerate an ineligible mental process does not
make that process patent-eligible.” Bancorp Services, L.L.C. v. Sun Life
Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012); see also
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(“relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.”).

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another abstract idea . . . does not render the claim non-abstract.”);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
For at least these reasons, we conclude representative independent
claim 119 recites the specific types of abstract ideas identified above in
Table One.

Additional Limitations
As emphasized in bold in Table One, supra, we note the additional
non-abstract limitations recited in representative claim 119: “a processor,”
“an options screen,” “a remote device,” and “a network.” We further note
the supporting exemplary descriptions of generic computer components in
the Specification, for example: “Back office clearing center 112 may be any
suitable equipment, such as a computer, a laptop computer, a mainframe
computer, etc., or any combination of the same, for causing trades to be
cleared and/or verifying that trades are cleared.” Spec. ¶ 22. (emphasis
added). See also:
Referring to FIG. 2, workstation 101 may include
processor 201, display 202, input device 203, and
memory 204, which may be interconnected. In a
20 preferred embodiment, memory 204 contains a
storage device for storing a workstation program for
controlling processor 201. Processor 201 may use the
workstation program to present on display 202 trade
information relating to bids, offers, and executed
25 trades relating to the futures and options contracts
for specialized indices to a user of workstation 101.
Spec. ¶ 23.
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We emphasize that McRO, Inc. v. Bandai Namco Games Am. Inc.,
(837 F.3d 1299 (Fed. Cir. 2016)), guides: “[t]he abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). See supra Table One.
Because we conclude all claims 1–6, 8–16, and 18–20 on appeal recite an
abstract idea, as identified above, under Step 2A, Prong One, we proceed to
Step 2A, Prong Two.

2019 Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the 2019 Revised Guidance, we consider whether there
are additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Revised Guidance, 84 Fed.
Reg. at 54–55.
MPEP § 2106.05(a)
Improvements to the Functioning of a Computer or
to Any Other Technology or Technical Field

Appellant argues:
Moreover, following that guidance of Alice, in Trading
Technologies International, Inc. v. CQG Inc., the Federal Circuit
recognized that claims to improvements to the efficiency of a
system used in trading are not directed to abstract ideas
regardless that the system was used for trading. A proper
analysis of the claims would have followed these guidelines and
found the claims to be patent eligible.
Appeal Br. 8 (emphasis added).
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However, Appellant fails to provide any substantive, persuasive
argument to analogize Appellant’s claims to the subject claims considered in
the cited case authorities. Id. We also note that Trading Techns. Int’l, Inc.
v. CQG, INC., (675 Fed.Appx. 1001 (Fed. Cir. 2017)), is a non-precedential
opinion.
Further, Appellant has not provided sufficient details regarding how
the recited “processor,” “options screen,” “remote device,” and “network
(claim 119) include more than mere instructions to perform the recited
functions to qualify as an improvement to an existing technology. As
discussed above, we conclude Appellant’s generic computer implementation
performs functions that can be performed alternatively as mental processes.
See independent Claim 119. Regarding the “automatically” performed steps
“i” and “k” of Claim 119, see Trading Techs. Int’l v. IBG LLC, 921 F.3d at
1384 (The “‘mere automation of manual processes using generic computers’
. . . ‘does not constitute a patentable improvement in computer
technology’”), quoting Credit Acceptance Corp., 859 F.3d at 1055.
Accordingly, on this record, we conclude independent claims 119 and
148 do not recite an improvement to the functionality of a computer or other
technology or technical field. See MPEP § 2106.05(a).

MPEP §§ 2106.05(b) and (c)
The Bilski Machine-or-Transformation test (“MoT”)

We note the Supreme Court cautions that the MoT test is not the sole
test, but may provide a useful clue:
This Court’s precedents establish that the machine-or-
transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed
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inventions are processes under § 101. The machine-or-
transformation test is not the sole test for deciding whether an
invention is a patent-eligible “process.”

Bilski, 561 U.S. at 604 (emphasis added).
Here, Appellant advances no arguments that any of method claims
119, 124, 125, 144, 146, and 147 are tied to a particular machine, or
transform an article to a different state or thing. See MPEP § 2106.05(c).
(We note the preamble of independent claim 148 recites: “An apparatus
comprising:” and therefore is not a method or process claim.).

MPEP § 2106.05(e) — Meaningful Claim Limitations14
Appellant argues:
With respect to identifying an abstract idea, the Office Action
identifies “facilitating the execution of a futures contract
transaction” as an abstract idea. However, the claims
encompass[] so many limitations and are not simply “facilitating
the execution of a futures contract transaction.” Instead, the
Office Action reduces the claims to a gist that ignores most of
the limitations including significant and meaningful limitations
on which patentability rests. This is directly in contradiction to
instructions to avoid reduction of the claims.
Appeal Br. 7 (emphasis added).
However, Appellant does not advance further substantive, persuasive
arguments as to any specific “meaningful” claim limitations, such as those

14 See 2019 Revised Guidance, 84 Fed. Reg. 55, citing MPEP § 2106.05(e):
“[A]pply[ing] or us[ing] the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception.” (emphasis added).

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of the types addressed under MPEP § 2106.05(e), that impose meaningful
limits on the judicial exception.
As discussed above, we conclude the recited italicized functions
shown in Table One could also be performed alternatively as a mental
process. See 2019 Revised Guidance, 84 Fed. Reg. at 52. As also discussed
above, we see nothing in Appellant’s claims that specifically improves the
efficiency of the processor (Independent claims 119 and 148), or another
technology or technical field, as addressed above under MPEP § 2106.05(a).
Accordingly, on this record, we conclude representative independent
Claim 119 has no other argued meaningful limitations, as considered under
section 2106.05(e) of the MPEP, pursuant to the 2019 Revised Guidance.

MPEP § 2106.05(f)
Merely including instructions to implement
an abstract idea on a computer, or
Merely using a computer as a tool
to perform an abstract idea

We conclude Appellant’s claimed invention merely implements the
abstract idea using instructions executed on generic computer components,
as depicted in bold type in Table One, and as supported in our reproduction
of the Specification, paragraphs 22–23, supra. Thus, we conclude
Appellant’s claims merely use a computer/processor as a tool to perform an
abstract idea.

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MPEP § 2106.05(g)
Adding insignificant extra-solution activity
to the judicial exception

As mapped in the right column of Table One, supra, we conclude that
representative independent Claim 119 recites extra or post-solution activities
that courts have determined to be insufficient to transform judicially
excepted subject matter into a patent-eligible application. See MPEP
§ 2106.05(g); 84 Fed. Reg. at 55 n.31.

MPEP § 2106.05(h)
Generally linking the use of the judicial exception to a particular
technological environment or field of use

The Supreme Court guides: “the prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or [by] adding
‘insignificant postsolution activity.’” Bilski, 561 U.S. at 611–12, (quoting
Diehr, 450 U.S. at 191–92).
Appellant advances no lack of preemption argument in the Appeal
Brief. Nor do claims 119, 124, 125, 144, 146, 147, and 148 on appeal
present any other issues as set forth in the 2019 Revised Guidance regarding
a determination of whether the additional generic elements integrate the
judicial exception into a practical application. See 2019 Revised Guidance,
84 Fed. Reg. at 55.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)–
(h)), we conclude claims 119, 124, 125, 144, 146, 147, and 148 do not
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integrate the judicial exception into a practical application. Therefore,
we proceed to Step 2B, The Inventive Concept.

The Inventive Concept – Step 2B
Under the 2019 Revised Guidance, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
Berkheimer was decided by the Federal Circuit on February 8, 2018.
On April 19, 2018, the PTO issued the Memorandum titled: “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memorandum”).15
Under Step 2B, the Examiner finds: “The claims require no more than
a generic computer to perform generic computer functions that are well-
understood, routine and conventional activities previously known to the
industry.” Final Act. 5 (emphasis added).

15 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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However, Appellant advances no Berkheimer arguments in the Appeal
Brief (filed March 27, 2018), or in the Reply Brief (filed Sept. 11, 2018),
both of which were filed after the February 8, 2018 date of the intervening
Berkheimer decision. Arguments not made are waived. See 37 C.F.R.
§ 41.37(c)(1)(iv).

BASCOM
The Federal Circuit held in BASCOM that the claimed Internet content
filtering, which featured an implementation “versatile enough that it could
be adapted to many different users’ preferences while also installed remotely
in a single location,” expressed an inventive concept in “the non-
conventional and non-generic arrangement of known, conventional pieces.”
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1350 (Fed. Cir. 2016).
Under Step 2B, Appellant cites to BASCOM as a supporting case
authority, but provides no substantive arguments analogizing any of the
claims 119, 124, 125, 144, 146, 147, and 148 before us on appeal to the
subject claim considered by the court in BASCOM. See Appeal Br. 8–9.
Thus, Appellant has not persuasively shown an unconventional, non-generic
arrangement regarding the non-abstract limitations of generic computer
components in any of the claims on appeal. See 2019 Revised Guidance, 84
Fed. Reg. at 52.
Therefore, it is our view that Appellant’s claims do not involve any
improvements to another technology, technical field, or improvements to the
functioning of the computer or network, as was seen by the court in
BASCOM. Instead, we conclude Appellant’s claims 119, 124, 125, 144,
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146, 147, and 148 merely invoke generic computer components as a tool in
which the instructions executing on the computer apply the judicial
exception.
Further, regarding the use of the recited generic computer components
identified above in Table One, the Supreme Court has held “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Alice, 573 U.S. at 223. Our reviewing
court provides additional guidance: See FairWarning, 839 F.3d at 1096
(“[T]he use of generic computer elements like a microprocessor or user
interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter.”); OIP Techs, 788 F.3d at 1363 (claims reciting, inter
alia, sending messages over a network, gathering statistics, using a
computerized system to automatically determine an estimated outcome, and
presenting offers to potential customers found to merely recite “‘well-
understood, routine conventional activit[ies],’ either by requiring
conventional computer activities or routine data-gathering steps” (alteration
in original)).
This reasoning is applicable here. Therefore, on the record before us,
Appellant has not shown that the claims on appeal add a specific limitation
beyond the judicial exception that is not well-understood, routine, and
conventional, when the claim limitations are considered both individually
and as an ordered combination. See MPEP § 2106.05(d).
In light of the foregoing, we conclude, under the 2019 Revised
Guidance, that each of Appellant’s claims 119, 124, 125, 144, 146, 147, and
148 considered as a whole, is directed to a patent-ineligible abstract idea
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that is not integrated into a practical application, and does not include an
inventive concept.
Accordingly, for the reasons discussed above, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of claims 119, 124, 125, 144,
146, 147, and 148.
CONCLUSION
Under our 2019 Revised Guidance, as governed by relevant case law,
we conclude all claims 119, 124, 125, 144, 146, 147, and 148, rejected under
35 U.S.C. § 101, are directed to patent-ineligible subject matter.
DECISION SUMMARY
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
Claims
Rejected
35 U.S.C. § Reference(s)Basis Affirmed Reversed
119, 124, 125,
144, 146, 147,
148
101 Eligibility 119, 124,
125, 144,
146, 147,
148

Overall
Outcome
119, 124,
125, 144,
146, 147,
148