Jacob Pechenik et al.

Patent Trials and Appeals Board

Jan 31, 2022

2021002509 (P.T.A.B. Jan. 31, 2022)

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. 12/537,552 08/07/2009 Jacob Pechenik YJI-08-1292R 5595 35811 7590 01/31/2022 IP GROUP OF DLA PIPER LLP (US) ONE LIBERTY PLACE 1650 MARKET ST, SUITE 5000 PHILADELPHIA, PA 19103 EXAMINER POLLOCK, GREGORY A ART UNIT PAPER NUMBER 3695 NOTIFICATION DATE DELIVERY MODE 01/31/2022 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): pto.phil@us.dlapiper.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JACOB PECHENIK, GREGORY CAMPBELL, and BLAKE BARNES ____________ Appeal 2021-002509 Application 12/537,552 Technology Center 3600 ____________ Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and KENNETH G. SCHOPFER, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant11 seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection2 of claims 1-24 and 46-52. We have jurisdiction under 35 U.S.C. § 6(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies ICE Data LP as the real party in interest. 1 All references to the Final Office Action refers to the Final Office Action mailed on September 20, 2020. Appeal 2021-002509 Application 12/537,552 2 SUMMARY OF DECISION We AFFIRM. THE INVENTION Appellant states the invention relates “to converting a trade transaction agreement into one or more structured products for submission to a post-trade processing facility.” Spec. ¶ 2. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method for electronically converting a data set into compatible data, the method comprising: electronically receiving, by a data interface of at least one computing device comprising a memory storing instructions and a processor executing said instructions, a first type of data set defining trade information for a trade transaction agreement between a first party and a second party, the data interface comprising at least one field for receiving data sets in a plurality of different data formats, said first type of data set being in a non-standardized format that is dependent upon a hardware and software platform used by a computing system of the first party or the second party, the non-standardized format being incompatible for processing by downstream systems; converting, by the at least one computing device, the first type of data set into a second type of data set that is standardized and compatible for processing by the downstream systems, said downstream systems comprising multiple post- trade processing facilities, by: defining, by the at least one computing device, a plurality of structured products from the trade information such that each of the plurality of structured products independently complies with specification parameters defined by one or more from among the multiple posttrade processing facilities, wherein at least two of the plurality of structured products are defined Appeal 2021-002509 Application 12/537,552 3 according to different specification parameters associated with different post-trade processing facilities; verifying, by the at least one computing device, that each of the plurality of structured products is compatible for processing by said one or more post-trade processing facilities; for each structured product, assigning a price value and assigning a volume, by the at least one computing device, wherein a sum of the price values equals a transaction price of the trade transaction agreement; electronically submitting, by the at least one computing device, each structured product with information identifying at least one of the first party or a representative thereof, and the second party or a representative thereof, to the one or more post-trade processing facilities in a respective data format for processing of the same; and processing, by the one or more post-trade processing facilities, each respective structured product submitted thereto. THE REJECTIONS Claims 1 and 46 are rejected under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Claims 1-24 and 46-52 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea. FINDINGS OF FACT We adopt the Examiner’s findings as set forth on pages 6-13 in the Final Office Action and on pages 5-11 in the Examiner’s Answer, concerning only the 35 U.S.C. § 101 rejection. Appeal 2021-002509 Application 12/537,552 4 ANALYSIS 35 U.S.C. § 112(a) REJECTION In rejecting claims 1 and 46, under 35 U.S.C. § 112(a) as failing to comply with the written description requirement, the Examiner found: in claim 1, “the non-standardized format being incompatible for processing by downstream systems,” and in claim 46, “the first data format being incompatible for processing by the downstream systems,” are not supported by the Specification. (Final Act. 3-4). Appellant argues, “there is no in haec verba requirement for complying with § 112. Support for the above referenced features may be found at least in paras. [0003]-[0007], [0022]-[0023], and [0062] of the originally filed specification.” (Appeal Br. 5). We agree with Appellant. Appellant directs, inter alia, to paragraph 63 which states, “[c]onstructing the trade transaction agreement into its one or more allowable structured products may include a verification that each structured product adheres to product specifications established by the one or more post-trade processing facilities.” Then in paragraph 63, the Specification explicitly points out incompatibility by stating, “if one or more of the structured products are found to not adhere to the product specifications and/or trade requirements, a different price allocation or other remedy may be suggested.” Thus we find the Specification conveys with reasonable clarity to those skilled in the art that, as of the filing date, applicant was in possession of the invention as now claimed. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). That is by pointing out that some structured products “are found not to adhere” describes incompatibility. Appeal 2021-002509 Application 12/537,552 5 Therefore, we will not sustain the rejection of claims 1 and 46 under 35 U.S.C. § 112(a). 35 U.S.C. § 101 REJECTION We will affirm the rejection of claims 1-24 and 46-52 under 35 U.S.C. § 101. The Appellant argues claims 1-24 and 46-52 as a group. (Appeal Br. 5). We select claim 1 as the representative claim for this group, and so the remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2015). An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Alice, 573 U.S. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See id. 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.”). Appeal 2021-002509 Application 12/537,552 6 Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (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 (1854))); 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 Appeal 2021-002509 Application 12/537,552 7 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 (quotation marks 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. In January 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).3 “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” Id. at 51;4 see also October 2019 Update at 1. Under the 2019 Revised Guidance, we first look to whether the claim recites: 3 In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”) (available at https://www.uspto.gov/sites/default/files/ documents/peg_oct_2019_update.pdf). 4 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 2106.04 and also supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.” See Guidance, 84 Fed. Reg. 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, Appellant’s arguments challenging the sufficiency of the Examiner’s rejection will not be addressed to the extent those arguments are based on now superseded USPTO guidance. Appeal 2021-002509 Application 12/537,552 8 (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) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5 Guidance, 84 Fed. Reg. at 52-55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Guidance, 84 Fed. Reg. at 52-56. The U.S. Court of Appeals for the Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the [S]pecification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether 5 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54- 55. Appeal 2021-002509 Application 12/537,552 9 the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See Enfish, 822 F.3d at 1335-36. In so doing, as indicated above, we apply a “directed to” two prong test: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim “appl[ies], rel[ies] on, or use[s] 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.” Guidance, 84 Fed. Reg. at 53; see also MPEP §§ 2106.04-2106.05. The Specification states: A trade transaction agreement, which may be defined as a basket (i.e., grouping) of one or more structured products, may be, according to various embodiments, converted into the one or more structured products. Trade information that represents the trade transaction agreement may be initially provided or specified in various forms, to subsequently be analyzed to construct the trade transaction agreement from its corresponding structured products. The structured products are suitable for submission to post-trade processing facilities for subsequent processing thereof and are accordingly submitted. The structured products may be submitted to a variety of post- trade processing facilities, or one post-trade processing facility may be utilized. The post-trade processing facilities may include, but are not limited to, clearing houses, trade.” Spec. ¶ 16. Submission and processing at a post-trade processing facility of a trade transaction agreement between a first party and a second party may be a complicated and time consuming process based upon various features of the trade transaction agreement. For example, trade transaction agreements executed Over-the- Counter (OTC) may often be composed of bundles of “vanilla” products such as a swap, call, or put. Post-trade processing Appeal 2021-002509 Application 12/537,552 10 facilities, such as clearing houses, often do not list or accept submission of these complex bundles, instead requiring that the bundles be decomposed prior to submission and submitted as one or more listed products. Manually submitting the products independently, instead of as a package/bundle, introduces a number of potential problems. First, the submission is time consuming due to the necessity to separate, analyze, and individually submit and process the various components of the transaction agreement. Second, the existing process is highly manual and as such leads to a large number of mistakes due to human error. Third, reconciliation is confusing and complicated because a single trade transaction agreement may necessitate reviewing multiple responses from the post-trade processing facilities. Spec. ¶¶ 3, 4. Claim 1 recites in pertinent part: receiving, …, a first type of data set defining trade information for a trade transaction agreement between a first party and a second party, the data interface comprising at least one field for receiving data sets in a plurality of different data formats, said first type of data set being in a non-standardized format that is dependent upon a hardware and software platform used by a computing system of the first party or the second party, the non-standardized format being incompatible for processing by downstream systems; converting, …, the first type of data set into a second type of data set that is standardized and compatible for processing by the downstream systems,… defining, …, a plurality of structured products from the trade information such that each of the plurality of structured products independently complies with specification parameters defined by one or more from among the multiple posttrade processing facilities, wherein at least two of the plurality of structured products are defined according to different specification parameters associated with different post-trade processing facilities; Appeal 2021-002509 Application 12/537,552 11 verifying, by the at least one computing device, that each of the plurality of structured products is compatible for processing by said one or more post-trade processing facilities; for each structured product, assigning a price value and assigning a volume, by the at least one computing device, wherein a sum of the price values equals a transaction price of the trade transaction agreement;… submitting, by the at least one computing device, each structured product with information identifying at least one of the first party or a representative thereof, and the second party or a representative thereof, to the one or more post-trade processing facilities in a respective data format for processing of the same; and processing, by the one or more post-trade processing facilities, each respective structured product submitted thereto. This intrinsic evidence shows that claim 1 recites a way of processing transactions by one or more post-trade processing facilities using otherwise incompatible data. The claim limitations, “defining, …, a plurality of structured products from the trade information such that each of the plurality of structured products independently complies with specification parameters defined by one or more from among the multiple posttrade processing facilities,” and “submitting, by the at least one computing device, each structured product with information identifying at least one of the first party or a representative thereof, and the second party or a representative thereof, to the one or more post-trade processing facilities,” are steps of the basic elements of a transaction. These steps cover post-trade processing facilitating settlement of a transaction; a transaction is superfluous if it is not settled. Commercial or legal interactions including agreements in the form of contracts are ones of certain methods of organizing human activity that are judicial exceptions. Guidance, 84 Fed. Reg. at 52. This is consistent Appeal 2021-002509 Application 12/537,552 12 with the Examiner’s determination that claim 1 is directed to “performance of a method of organizing human activity” in that “[c]onverting a trade transaction agreement into one or more structured products is a fundamental economic practice long prevalent in commerce systems.” Final Act. 10. The steps highlighted above in italics mimic human thought processes of selecting certain information over others, i.e., evaluation, and creating perhaps with paper and pencil, graphic data interpretation perceptible only in the human mind. See In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016). The Federal Circuit has held similar concepts to be abstract. Thus, for example, the Federal Circuit has held that abstract ideas include the concepts of collecting data, analyzing the data, and reporting the results of the collection and analysis, including when limited to particular content. See, e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340-41 (Fed. Cir. 2017) (identifying the abstract idea of organizing, displaying, and manipulating data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (characterizing collecting information, analyzing information by steps people go through in their minds, or by mathematical algorithms, and presenting the results of collecting and analyzing information, without more, as matters within the realm of abstract ideas). Thus, under the first prong, claim 1 also recites the patent ineligible judicial exception of a mental process. Turning to the second prong of the “directed to” test, claim 1 only generically requires a memory, data interface, one computing device, one or more post-trade processing facilities. These components are described in the Specification at a high level of generality. See Spec. ¶¶ 17, 26, 27, Fig. 6. Appeal 2021-002509 Application 12/537,552 13 We fail to see how the generic recitations of these most basic computer components and/or of a system so integrates the judicial exception as to “impose[] a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg. at 53. The recitation of “at least one field for receiving data sets in a plurality of different data formats, said first type of data set being in a non-standardized format,” is deemed merely to be a recitation of data characterization. As we construe the term “data sets” above to mean a “a number of things of the same kind that belong or are used together,” without any further limitation as to how they are structured other than the being used together in transaction processing, does not present a practical application, but instead presents a generic and conventional computer programming practice. That the claims do not preempt all forms of the abstraction or may be limited to trade transactions, does not make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) (“And that the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract.”). Turning to the second step of the Alice analysis, because we find that the claims are directed to abstract ideas/judicial exceptions, the claims must include an “inventive concept” in order to be patent-eligible, i.e., there must be an element or combination of elements sufficient to ensure that the claim in practice amounts to significantly more than the abstract idea itself. See Alice, 573 U.S. at 217-18 (quoting Mayo, 566 U.S. at 72-73). Appeal 2021-002509 Application 12/537,552 14 Concerning this step the Examiner found the following: “the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more that the abstract idea(s).” (Final Act. 13). We agree with the Examiner. “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer.” Alice, 573 U.S. at 225. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer to retrieve, select, and apply decision criteria to data and modify the data as a result amounts to electronic data query and retrieval-one of the most basic functions of a computer. In short, each step does no more than require a generic computer to perform generic computer functions. The claims do not, for example, purport to improve the functioning of the computer itself. The Specification spells out different generic equipment and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of information access under different scenarios. See, e.g., Spec. ¶¶ 17, 26, 27, Fig. 6, Fig. 1. Thus, the claims at issue amount to nothing significantly more than instructions to apply the abstract idea using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26. Appeal 2021-002509 Application 12/537,552 15 Considered as an ordered combination, the computer components of Appellant’s claims add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis (receiving/converting/defining/verifying/submitting) and storing is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction); Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval, analysis, modification, generation, display, and transmission was abstract); Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling, and monitoring was abstract). The ordering of the steps is, therefore, ordinary and conventional. As to the structural claims (46-52), they are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea. This Court has long “warn[ed] . . . against” interpreting § 101 “in ways that make patent eligibility ‘depend simply on the draftsman’s art.’” Alice, 573 U.S. at 226 (quoting Mayo, 566 U.S. at 72). As a corollary, the claims are not directed to any particular machine. We have reviewed all the arguments Appellant has submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101 (Appeal Br. 5-18; Reply Br. 2-4). We find that our analysis above substantially covers the substance of all the arguments, which Appeal 2021-002509 Application 12/537,552 16 have been made. But, for purposes of completeness, we will address various arguments in order to make individual rebuttals of same. On page 7 of its Appeal Brief, Appellant argues there is nothing innate in the claimed “[defining/]verifying]” operation that would lead one skilled in the art to conclude that “verifying that each of the plurality of structured products is compatible for processing by said one or more post-trade processing facilities” would constitute an abstract idea akin to a fundamental economic practice. Appeal Br. (7-8). We disagree with Appellant. Defining structured products from trade information to comply with specification parameters from among multiple post trade processing facilities is the first step in effecting compatibility of operation as among various multiple post trade processing facilities. The Specification itself states that this compatibility is desirable because “reconciliation is confusing and complicated because a single trade transaction agreement may necessitate reviewing multiple responses from the post-trade processing facilities.” Spec. ¶ 4. The word “reconcile” itself means “to check (a financial account) against another for accuracy.”6 Therefore the claimed process is directed to a way of better settling transactions which we find constitutes a fundamental economic practice. Appellant argues, in rendering the claims abstract, the Examiner has removed all the hardware limitations from the claims and concluded that the remaining functional limitations constitute abstract idea(s). This is in direct contrast to USPTO guidance. By labeling all functional language within the claims, and labeling those as an alleged abstract idea, the Examiner is limiting the pool of 6 https://www.merriam-webster.com/dictionary/reconciled. Appeal 2021-002509 Application 12/537,552 17 elements that may be considered as ‘additional limitations’ for purposes of the Prong Two analysis. Appeal Br. 8. We disagree with Appellant that the Examiner’s “removal” of the hardware elements in the Alice Step 1(a) analysis constitutes error because it is clear the Examiner considers the hardware limitations in both the Prong (2) and in the Step 2(b) tests. In the Prong (2) test the Examiner found, “[t]he claim limits also recite the use of a processor, memory, and a network. However, the use of these additionally [sic] elements described at a high level of generality and perform generic computer functions” (Final Act. 12), and in the Step 2(b) test, the Examiner found, “the additional element of using a processor to perform the abstract idea(s) amounts to no more than mere instructions to apply the exaction using a generic computer component.” Final Act. 13. Appellant argues, The Appellant’s system improves upon these prior art systems by enabling users to submit electronic trade information in a non-standardized format (dependent on the software and hardware platform of their system), which is not compatible with the downstream system, and converts that information to a standard format, which is compatible with the downstream system. Appeal Br. 10. Here, the alleged improvement lies in the abstract idea itself, i.e, converting one data format to another data format, not to any technological improvement. See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287-88 (Fed. Cir. 2018). Appeal 2021-002509 Application 12/537,552 18 Appellant next asserts that its claims are akin to those noted in the USPTO’s Example 42 of the 2019 Revised Guidance.7 Appeal Br. 11-12. We disagree with Appellant. Appellant’s argument is unpersuasive because the claims in Example 42 of the 2019 Revised Guidance, are distinguishable from claim 1 before us on appeal. We find that claim 1 of Example 42 affirmatively recites the network processing steps of: e) automatically generating a message containing the updated information about the patient's condition by the content server whenever updated information has been stored; and f) transmitting the message to all of the users over the computer network in real time, so that each user has immediate access to up-to-date patient information. Here, we find nothing in claim 1 resembling this type of machine based action. All steps of claim 1 constitute steps which mimic the mental processes of a human mind, namely, monitoring, detecting, analyzing, determining and generating. Appellants argues, similar to the elements in Example 42, Claim 1, the Appellant’s claims include a combination of elements that constitute a specific improvement over prior art systems by enabling remote users to submit trade information, in real-time, regardless of the trade format (e.g., unbundled vs. bundled), and converting non- compliant trade information into compliant trade information. As such, the Appellant respectfully submits that similar to Example 42, Claim 1, Appellant’s Claim 1, as a whole, integrates the alleged judicial exception into a practical application. Appeal Br. 12. 7 2019 Revised Guidance, “Subject Matter Eligibility Examples: Abstract Ideas,” at 10, available at https://www.uspto.gov/sites/default/files/ documents/101_examples_37to42_20190107.pdf. Appeal 2021-002509 Application 12/537,552 19 We disagree with Appellant because here again, the alleged improvement lies in the abstract idea itself, not to any technological improvement. See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287-88 (Fed. Cir. 2018). Even if the advance over the prior art is to “convert[] the trade information from a non-compliant format to a compliant format,” (Appeal Br. 13) that purported advance is an abstract idea itself, i.e., a mental process or in the alternative when taken with the transaction data, a fundamental economic process or practice similar to hedging against financial risk in Bilksi, 561 U.S. at 609, and collecting and analyzing investment data in SAP America, 898 F.3d at 1167-68, using conventional technology. And, although “[t]he claims in this case specify what information . . . is desirable to gather, analyze, and display, including in “real time”; but they do not include any requirement for performing the claimed functions of gathering, analyzing, and displaying in real time by use of anything but entirely conventional, generic technology.” Elec. Power Grp., 830 F.3d at 1356 (emphasis added). On page 14 of the its Brief, Appellant sets forth “specific limitations that confine the claims to a particular useful application.” (Appeal Br. 14). “Merely requiring the selection and manipulation of information-to provide a ‘humanly comprehensible’ amount of information, useful for users-by itself does not transform the otherwise-abstract processes of information collection and analysis” into patent-eligible subject matter. Elec. Power Grp., 830 F.3d at 1356 (citations omitted). Appellant argues, the above claim limitations cannot possibly be equated to well- understood, routine, or conventional computer operations. Any attempt to construe the limitations otherwise is an improper Appeal 2021-002509 Application 12/537,552 20 interpretation of the Appellant's claim language. Any attempted rebuttal by the Examiner of said inventive concept would necessarily require factual evidence under Step 2B and the Berkheimer standard. Appeal Br. 14. We disagree with Appellant. First, the Federal Circuit in Berkheimer made clear that “not every § 101 determination contains genuine disputes over the underlying facts material to the § 101 inquiry.” Berkheimer, 881 F.3d at 1368. In fact, the Federal Circuit in Berkheimer did not require evidentiary support for independent claim 1 because “[t]he limitations [of claim 1] amount to no more than performing the abstract idea of parsing and comparing data with conventional computer components.” Id. at 1370. Second, although the second step in the Mayo/Alice framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or non-obviousness, but rather, a search for “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 217-218 (alteration in original) (citation omitted). Concerning Appellant’s reliance on PTAB Decision, Ex parte Smith, (Appeal 2018-000064), (Appeal Br. 15-16), we decline to be bound by another panel’s non precedential decision. For the reasons identified above, we will sustain the Examiner’s § 101 rejection of claims 1-17. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1-24 and 46-52 under 35 U.S.C. § 101. Appeal 2021-002509 Application 12/537,552 21 We conclude the Examiner erred in rejecting claims 1 and 46 under 35 U.S.C. § 112(a). Because we have affirmed at least one ground of rejection with respect to each claim on appeal, the Examiner’s decision is affirmed. See 37 C.F.R. § 41.50(a)(1). DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1 112(a) Written Description 1 46 112(a) Written Description 46 1-24, 46- 52 101 Eligibility 1-24, 46- 52 Overall Outcome 1-24, 46- 52 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