Jaycobs, Rich et al.

Patent Trials and Appeals Board

Mar 25, 2020

14521491 - (D) (P.T.A.B. Mar. 25, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/521,491 10/23/2014 Rich Jaycobs 13-2397 4419
63710 7590 03/25/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
OYEBISI, OJO O
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
03/25/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
lkorovich@cantor.com
patentdocketing@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICH JAYCOBS, HOWARD W. LUTNICK,
and MICHAEL SWEETING
____________

Appeal 2018-008087
Application 14/521,491
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s final decision to reject claims 1, 4–6, 8, 9, 11–15, 17–19, and 25,
which are all the pending claims. 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. The Appellant identifies the real party in interest as BGC
Partners, Inc. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The Appellant states its invention generally “relate[s] to trading”
(Spec. 1, l. 7) and specifically to “[a] trading apparatus [that] may facilitate
matching, exchange, settlement, tracking, calculating and/or other actions
that may aid in the establishment of a market for the financial instruments”
(id. at 6, ll. 23–25).
Claims 1, 6, and 13 are the independent claims on appeal. Claim 1 is
representative of the subject matter on appeal and is reproduced below (with
added bracketing for reference):
1. An apparatus comprising:
one or more processors of a trading venue; and
one or more non-transitory media having stored thereon a
plurality of instructions that when executed by the one or more
processors, cause the apparatus to:
[(a)] intentionally constrain a facilitation of a request for
cross in a swap contract by a market participant;
[(b)] receive an indication of the swap contract from the
market participant;
[(c)] in response to receiving the indication of the swap
contract, publically announce a potential crossing of the swap
contract to all market participants of the trading venue;
[(d)] in response to receiving the indication of the swap
contract, track a first period of time and assign a numerical
identifier to the potential crossing;
[(e)] in response to receiving the indication of the swap
contract, populate a user interface of the market participant with
information identifying the first time period and control the user
interface to prevent submission of the request for cross during
the first period of time;
[(f)] after the first period of time delay has passed, allow
facilitation of the request for cross in the swap contract by the
market participant for a second period of time;
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[(g)] after the first period of time has passed, adjust the
user interface of the market participant to identify that the first
period of time is over and to show the second time period;
[(h)] receive the request for cross from the market
participant during the second period of time, in which the request
for cross identifies two parties, a ticker symbol of the swap
contract, the numerical identifier, a price and a quantity;
[(i)] verifying that the request for cross includes the
numerical identifier;
[(j)] determine that no better price than the price for the
request for cross exists in the market for either of the two parties;
[(k)] determine that an equal price to the price for one of
the two parties with a better time priority than the request for
cross exists in the market;
[(l)] determine, based on the ticket symbol of the swap
contract and a database mapping ticker symbols and
clearinghouses, a clearinghouse for the cross; and
[(m)] in response to verifying the numerical identifier,
determining that no better price than the price exists and
determining the clearinghouse, facilitate execution of the cross
between the two parties at the price and for the quantity through
the clearinghouse.
Appeal Br. 11–12 (Claims App.).
THE REJECTION
Claims , 4–6, 8, 9, 11–15, 17–19, and 25 stand rejected under
35 U.S.C. § 101 as being directed to a judicial exception without
significantly more.

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OPINION
The Appellant argues the claims as a group. See Appeal Br. 6, 10.
We select claim 1 as representative of the group, with claims 4–6, 8, 9, 11–
15, 17–19, and 25 standing or falling therewith. See 37 C.F.R.
§ 41.37(c)(1)(iv).
35 U.S.C. § 101 Framework
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. Alice Corp. 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. Id. 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 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
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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 (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 176; 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 (internal quotation marks
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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.
After the Appellant’s Briefs were filed and the Examiner’s Answer
mailed, 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) (“2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Mayo/Alice framework by
(1) providing groupings of subject matter that are considered an abstract
idea; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id. 2 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, certain methods of

2 The 2019 Revised Guidance supersedes MPEP § 2106.04(II) and also
supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet
Identifying Abstract Ideas.” See 2019 Revised 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.”). Thus, the
Appellant’s arguments related to prior guidance (see, e.g., Appeal Br. 7–8,
citing “binding” USPTO examination guidelines from May 4, 2016 and
November 2, 2016) will not be considered.
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organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed Reg. at 54, 56.
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework, the Examiner
determines that claim 1 is “directed to an abstract idea of trading financial
instruments . . . [which] is a method of fundamental economic practice . . .
[and] which corresponds to concepts identified as abstract ideas by the
courts, such as formulation and trading of risk in Alice.” Final Act. 3–4.
When viewed through the lens of the 2019 Revised Guidance, Step 2A,
Prong 1 (see 84 Fed. Reg. at 54), the Examiner’s analysis depicts the
claimed subject matter as a “[c]ertain method[] of organizing human
activity—fundamental economic principles or practices (including hedging,
insurance, mitigating risk)” (id. at 52); see also October 2019 Update:
Subject Matter Eligibility 5 (“October 2019 Update”)). The Examiner also
determines that the elements of the claim merely use a generic processor to
perform the functions of the claim. See Final Act. 4. When viewed through
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the lens of the 2019 Revised Guidance, Step 2A, Prong 2 (see 84 Fed. Reg.
at 54–55), the Examiner determines that the additional elements or
combination of elements do not integrate the exception into a practical
application because it “merely uses a computer as a tool to perform an
abstract idea” (id. at 55).
The Appellant contends that claim 1, “like the claim in Trading
Technology, Inc v CQG, Inc. present[s] a non-conventional improvement to
trading technology that increase[s] the efficiency and usability of trading
systems.” Appeal Br. 9. When viewed through the lens of the 2019 Revised
Guidance, the Appellant contends that under Step 2A, Prong 2, the elements
of the claim integrate the abstract idea into a practical application because
the combination of the elements “reflects an improvement in the functioning
of a computer, or an improvement to other technology or technical field.”
84 Fed. Reg. at 55. For at least the following reasons, we disagree.
Reciting a Judicial Exception
Before determining whether the claim at issue is directed to an
abstract idea, we first determine to what the claim is directed. The Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the specification, 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 the focus of the claim 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 id. at 1335–36.
Here, it is clear from the Specification, and the claim language, that the
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focus of claim 1 is on an abstract idea, and not on any improvement to
technology and/or a technical field.
The Specification provides for a “SWAP CROSSING SYSTEM AND
METHOD.” Spec. Title. The “BACKGROUND” section provides
“[m]arketplaces match bids and orders for trades in financial instruments.
Swap contracts allow traders to trade based on rates.” Id. at 1, ll. 9–10. The
Specification further provides for a trading apparatus for financial
instruments that “may facilitate matching, exchange, settlement, tracking,
calculating and/or other actions that may aid in the establishment of a market
for the financial instruments,” such as futures contracts that “may grant one
party some right from another party in the future in exchange for some cost
now” and swap contracts that “may grant one party a payment based on a
first interest rate and another party a payment based on a second interest
rate.” Id. at 6, l. 23–7, l. 4.
Consistent with the disclosure, claim 1 recites “[a]n apparatus
comprising” one or more processors and media with instructions that cause
the processor(s) to perform the functions of: (a) “intentionally constrain[ing]
a facilitation of a request for cross”; (b) “receiv[ing] an indication of the
swap contract”; in response to receiving the indication, (c) publically
announcing a potential crossing, (d) “track[ing] a first period of time and
assign[ing] a numerical identifier to the potential crossing,” and
(e) populating a user interface with information identifying the period and
controlling the interface to prevent submission of the request to a second
period of time; (f) receiving the request during the second period that
identifies two parties, a ticker symbol, numerical identifier, price, and
quantity; (g) “verifying that the request for cross includes the numerical
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identifier” (h) determining that no better price exists; (i) determining that an
equal price exists; (j) determining a clearinghouse based on symbols and
clearinghouses, and (k) in response to the verifying and determining,
facilitating execution of the cross through the clearinghouse. Appeal Br. 11–
12 (Claims. App). The limitations are recited functionally without any
implementation details.
When considered collectively and under the broadest reasonable
interpretation, the limitations of claim 1 recite an apparatus for facilitating
trading of financial instruments such as swap contracts.3 This is an abstract
idea of a “[c]ertain method[] of organizing human activity—fundamental
economic principles or practices (including hedging, insurance, mitigating
risk).” 2019 Revised Guidance, 84 Fed. Reg. at 52. This is consistent with
the Examiner’s characterization.
The courts have held similar concepts to be abstract. For example, the
Federal Circuit has held abstract the concepts of hedging in Bilski,
intermediated settlement in Alice, employing a filter for a loan-application
clearinghouse in LendingTree, LLC v. Zillow, Inc., 656 F. App’x 991, 995–
96 (Fed. Cir. 2016), and “receiving user input to send an order” in Trading
Tech. Int’l., Inc. v. IBG LLC, 921 F.3d 1084, 1094 (Fed. Cir. 2019)
(“Trading Tech.”). Thus, we disagree that the Examiner’s “reduction of the
claims to ‘trading financial instruments’ does just what the PTO and the

3 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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courts have directed against by ignoring nearly every element of the claim.”
Appeal Br. 8.
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, in determining whether the claim is directed to this abstract
idea, we next consider whether the claim recites additional elements that
integrate the judicial exception into a practical application.
Integration into a Practical Application
Under Step 2A, Prong 2 of the 2019 Revised Guidance, 84 Fed. Reg.
at 54, we look to 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,” i.e., “integrates a judicial exception
into a practical application.” Here, the only additional elements recited in
claim 1 beyond the abstract idea are “one or more processors” and “one or
more non-transitory media” with instructions to cause an apparatus to
perform the claimed functions — elements that, as the Examiner observes
(Final Act. 4–5; Ans. 5), are described in the Specification as generic
computer components. See Spec. 35, l 18–37, l. 7 (describing that the
process is carried out by a generic processor and generic computer readable
media).
Limitations (a), (c)–(g), and (i)–(m) of constraining, announcing,
tracking, populating, controlling, allowing, adjusting, verifying, determining,
and facilitating are recited functionally without technical or technological
details on how, i.e., by what algorithm or on what basis/method, the
processor is caused to perform these steps. Limitations (a), (e), and (f) of
constraining facilitation, preventing submission, and allowing facilitation
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after a time period are similar to filtering data, which is an abstract idea (see
BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1348 (Fed. Cir. 2016)) and can comprise an analysis of data based on a rule,
which can be performed mentally (see FairWarning IP LLC v. Iatric
Systems, Inc., 839 F.3d 1089, 1093 (Fed. Cir. 2106) (analyzing information
according to certain rules is a mental process). The limitations of gathering
data, i.e., limitations (b) and (h) of receiving an indication and a request, are
extra-solution activities. See In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008)
(en banc), aff’d sub nom Bilski v. Kappos, 561 U.S. 593) (characterizing data
gathering steps as insignificant extra-solution activity). Limitations (c), (e),
and (g) of announcing a potential crossing, populating an interface with
information, and adjusting the interface to identify and show information are
limitations of displaying received and resulting information, which are post-
solution activities. See Bilski, 561 U.S. at 610–11 (“Flook stands for the
proposition that the prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or adding ‘insignificant postsolution activity.”’)
(quoting Diehr, 450 U.S. at 191–92); Electric Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“we have recognized that merely
presenting the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool for
presentation) is abstract as an ancillary part of such collection and
analysis.”). The limitations of determining data, i.e., limitations (d), (i), (j),
(k), and (l) of tracking a period, assigning an identifier, verifying a request,
determining whether a better or equal price exists, and determining a
clearinghouse, comprise analyses of data, which can be performed mentally.
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See Electric Power, 830 F.3d at 1354 (“[W]e have treated analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes”). Limitation (m)
of facilitating execution of the cross in response to the determinations is
simply performing an action, e.g., gathering and transmitting information,
based on the analyses, which is a post-solution activity. See Bilski, 561 U.S.
at 610–11.
We find no indication in the Specification, nor does the Appellant
direct us to any indication, that the operations recited in claim 1 require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, invoke any asserted inventive programming, or
that the claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”).
We disagree that the claim presents a “non-conventional improvement
to trading technology that increase the efficiency and usability of trading
systems” (Appeal Br. 9) similar to the claims in Trading Techs. Int’l, Inc. v.
CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017) (“CQG”). In CQG, the
Federal Circuit affirmed the district court’s denial of CQG’s motion for
judgment as a matter of law and determined that “the claimed subject matter
is ‘directed to a specific improvement to the way computers operate,’ . . . for
the claimed graphical user interface method imparts a specific functionality
to a trading system ‘directed to a specific implementation of a solution to a
problem in the software arts.’” 675 F. App’x at 1006 (citations omitted).
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Specifically, the Federal Circuit held that the district court’s conclusion that
“the specific structure and concordant functionality of the graphical user
interface are removed from abstract ideas, as compared to conventional
computer implementations of known procedures” was in “accord with
precedent.” Id. at 1005.
In contrast, here, the Appellant does not identify how the claim solves
a problem in the software arts. The Appellant does not direct our attention
to, and we do not see anything in, the record that provides an indication how
the claimed invention increases the “efficiency and usability of trading
systems.” As discussed above, a generic processor is used to implement the
steps, and there is no indication that claim 1 improves the functioning of the
processor, makes it operate more efficiently, or solves a technological
problem with a solution rooted in computer technology. Claim 1 simply
adapts an interface “to simply display market data; there is no improvement
to the existing graphical user interface device.” Ans. 4. Rather, the claim
here is similar to those of Trading Tech. that did not “solve any purported
technological problem.” 921 F.3d at 1094; see also id. at 1093. Any
improvement lies in the process of trading swap contracts, the abstract idea
itself, not to any technological improvement. See id.
Accordingly, we conclude claim 1 does not contain an element that
imposes a meaningful limit on the abstract idea that integrates the abstract
idea into a practical application.
Thus, we are not persuaded of error in the Examiner’s determination
that claim 1 is directed to an abstract idea.
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Step Two of the Mayo/Alice Framework
Under the second step in the Alice framework (corresponding to Step
2B of the 2019 Revised Guidance), we find supported the Examiner’s
determination that the limitations of claim 1, taken individually and as an
ordered combination, do not amount to significantly more than the judicial
exception, that “the recited ‘processors’ are recited at a high level of
generality to simply perform the generic computer functions of generating,
receiving, analyzing, sorting, storing, determining, calculating and
transmitting information,” and that the “generic computer components
recited as performing generic computer functions that are well-understood,
routine and conventional activities amount to no more than implementing
the abstract idea with a computerized system.” Final Act. 4–5; Ans. 5.
The Appellant argues that “there is no prima facie showing that each
and every limitation of each and every claim taken both together and
separately do not add significantly more than the alleged abstract idea” and
that “the ability of implementation to occur using generic computer
components or performing generic functions is not determinative of whether
a claim adds significantly more to an abstract idea.” Appeal Br. 9 (citing
BASCOM).
Here, the Examiner correctly considers the claim’s limitations
individually and as an ordered combination as factors in determining that the
claim does not recite limitations that transform the nature of the claim into a
patent-eligible invention. See Final Act. 4–5; Ans. 5–6. Thus, the Examiner
has clearly articulated the reasons as to why the claim is directed to an
abstract idea and has notified the Appellant of the reasons for the rejection
“together with such information and references as may be useful in judging
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of the propriety of continuing the prosecution of [the] application.”
35 U.S.C. § 132. In doing so, the Examiner has set forth a prima facie case
of unpatentability. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011);
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is
violated when a rejection is so uninformative that it prevents the applicant
from recognizing and seeking to counter the grounds for rejection”).
Further, the Appellant does not show how the claim here is similar to
BASCOM’s “particular arrangement of elements [that] is a technical
improvement over prior art ways of filtering such content.” 827 F.3d
at 1350; cf. Appeal Br. 9. The patent at issue in BASCOM “claim[ed] a
technology-based solution (not an abstract-idea-based solution implemented
with generic technical components in a conventional way) to filter content
on the Internet that overcomes existing problems with other Internet filtering
systems.” Id. at 1351. The court determined that “[b]y taking a prior art
filter solution (one-size-fits-all filter at the ISP server) and making it more
dynamic and efficient (providing individualized filtering at the ISP server),
the claimed invention represents a ‘software-based invention[ ] that
improve[s] the performance of the computer system itself.’” Id. Here, there
is no such improvement to the claimed processor itself, or an unconventional
arrangement of processors that is a technical improvement.
The Specification indisputably shows the claimed computing system
was conventional at the time of filing. See supra; Spec. 35–38. The
Appellant provides no argument, reasoning, or evidence to the contrary.
Accordingly, no genuine issue of material fact exists as to the well-
understood, routine, or conventional nature of the system as claimed.
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The Appellant also does not offer additional reasoning or argument
why the claim “[a]dds a specific limitation or combination of limitations that
[is] not well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present.” 2019 Revised
Guidance, 84 Fed. Reg. at 56. As discussed above, the claim simply recites
the functional results to be achieved by a conventional computer system.
The claim “provides only a result-oriented solution[] with insufficient detail
for how a computer accomplishes it. Our law demands more.” Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir.
2017). The claimed generic processor operates in its ordinary and
conventional capacity to perform the well-understood, routine, and
conventional functions of receiving and transmitting data (i.e., receiving and
announcing data, and executing a cross), filtering data (i.e., constraining and
preventing submission of data), analyzing data (i.e., tracking, verifying, and
determining data), and performing actions based on the analyses (i.e.,
populating, adjusting to identify and show, and executing data). See
Spec. 32–38 (describing that the method can be performed in any order with
generic computer elements); Electric Power, 830 F.3d at 1354–55
(gathering, sending, monitoring, analyzing, selecting, and presenting
information does not transform the abstract process into a patent-eligible
invention); Alice, 573 U.S. at 226 (“Nearly every computer will include a
‘communications controller’ and ‘data storage unit’ capable of performing
the basic calculation, storage, and transmission functions required by the
method claims.”); BASCOM, 827 F.3d at 1349 (filtering, generally, is not
inventive); Trading Tech., 931 F.3d at 1093–1095 (data gathering,
displaying information, selecting data, identifying data, mapping data, and
Appeal 2018-008087
Application 14/521,491

18
sending trade orders are well-understood, routine, and conventional
activities).
Considered as an ordered combination, the components of the
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of filtering data, receiving and
transmitting data, controlling data, analyzing data, and performing an action
based on the analysis is equally generic and conventional or otherwise held
to be abstract. See Electric Power, 830 F.3d at 1354–56 (holding that the
sequence of gathering, analyzing, and displaying in real-time was abstract);
OIP Techs., 788 F.3d at 1363–64 (holding that sequence of sending,
communicating, gathering, determining, selecting, and sending data),
FairWarning., 839 F.3d at 1095 (holding that sequence of generating a rule
related to accessing information, applying the rule, and storing and
announcing the results was abstract); Trading Tech., 931 F.3d at 1093–1095
(ordered combinations did not transform claims into patent-eligible
inventions). The ordered combination of the elements is, therefore, ordinary
and conventional.
Thus, we are not persuaded of error in the Examiner’s determination
that the limitations of claim 1 do not transform the claim into significantly
more than the abstract idea.
We therefore sustain the Examiner’s rejection under 35 U.S.C. § 101
of independent claim 1 and of claims 4–6, 8, 9, 11–15, 17–19, and 25, the
rejection of which stands with claim 1.
Appeal 2018-008087
Application 14/521,491

19
CONCLUSION
The Examiner’s decision to reject claims 1, 4–6, 8, 9, 11–15, 17–19,
and 25 is sustained.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4–6, 8, 9, 11–
15, 17–19, 25
101 Eligibility 1, 4–6, 8, 9, 11–
15, 17–19, 25

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)(l)(iv).

AFFIRMED