John Labuszewski et al.

Patent Trials and Appeals Board

Oct 28, 2019

14334990 - (D) (P.T.A.B. Oct. 28, 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.
14/334,990 07/18/2014 John Labuszewski 004672-14403Z-US 5951
12684 7590 10/28/2019
Lempia Summerfield Katz LLC/CME
20 South Clark Street
Suite 600
Chicago, IL 60603
EXAMINER
HOLLY, JOHN H
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
10/28/2019 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):
docket-us@lsk-iplaw.com
mail@lsk-iplaw.com
pair_lsk@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOHN LABUSZEWSKI, FREDERICK STURM,
JAMES BOUDREAULT, JONATHAN KRONSTEIN,
DANIEL GROMBACHER,
and
AGHA IRTAZA MIRZA
____________

Appeal 2018-007492
Application 14/334,9901
Technology Center 3600
_______________

Before JOSEPH L. DIXON, HUNG H. BUI, and JON M. JURGOVAN,
Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final rejection of claims 1, 4, 6–8, 11, 13–15, 18, 20, and 21,
which are all the claims pending in the application. Appeal Br. 14–18,
Claims App. Claims 2, 3, 5, 9, 10, 12, 16, 17, and 19 have been cancelled.
Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicant(s)” as defined in 37
C.F.R. § 1.42. The real party in interest is Chicago Mercantile Exchange
Inc. Appeal Br. 1.
2 Our Decision refers to Appellant’s Appeal Brief filed January 17, 2018
(“Appeal Br. ”); the Examiner’s Answer mailed May 4, 2018 (“Ans.”); the
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STATEMENT OF THE CASE
Appellant’s invention is directed to “methods for processing data
associated with invoice swap spreads, [and] computer systems configured to
perform such methods,” a computer system “stor[ing] data that includes
invoice swap spread (IVSP) parameters” and “calculat[ing] a yield based on
the invoice price and the terms of [a] delivered debt instrument,”
“calculat[ing] a fixed rate for an IRS leg of the executed IVSP based on the
IRS parameters, the yield, and a price of the executed IVSP,” and
“calculat[ing] fixed rate payment dates for the IRS leg of the executed IVSP
based on the IRS parameters and the terms of the delivered debt instrument.”
Spec. ¶¶ 3–4.
Claims 1, 8, and 15 are independent. Independent claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. A method comprising:
[1] receiving, at a computer system, buy order data
representing a bid price for an invoice swap spread (IVSP)
contract conforming to previously-stored IVSP parameters and
sell order data representing an offer price for an IVSP
conforming to the IVSP parameters, wherein the IVSP
parameters include futures contract parameters and interest rate
swap (IRS) parameters, wherein the IVSP parameters indicate
that an IVSP contract conforming to the IVSP parameters
includes a futures contract leg conforming to futures contract
parameters and an IRS leg conforming to IRS parameters;
[2] matching, by the computer system and at an
execution price, the buy order data and the sell order data;
[3] storing, by the computer system and as a result of the
matching, data representing an executed IVSP contract, the
executed IVSP contract having a resulting futures contract leg

Final Office Action mailed August 18, 2017 (“Final Act.”); and the original
Specification filed July 18, 2014 (“Spec.”).
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conforming to the futures contract parameters and a resulting
IRS leg conforming to the IRS parameters, the resulting futures
contract leg requiring delivery of a debt instrument, the
resulting IRS leg beginning at an end of the resulting futures
contract leg;
[4] receiving, by the computer system, data describing
terms, a delivery date and an invoice price for the debt
instrument;
[5] calculating, by the computer system, a yield based on
the invoice price and the terms of the debt instrument;
[6] calculating, by the computer system, and based on the
IRS parameters, the yield, and the execution price, a fixed rate
for the resulting IRS leg;
[7] calculating, by the computer system, and based on the
IRS parameters and the terms of the debt instrument, fixed rate
payment dates for the resulting IRS leg;
[8] calculating, by the computer system, a notional value
for the resulting IRS leg based on a notional value of the
resulting futures contract leg, a value corresponding to an
interest rate sensitivity of the resulting futures contract leg, and
a value corresponding to an interest rate sensitivity of the
resulting IRS leg; and
[9] transmitting, by the computer system, data including
the fixed rate and the notional value.

Appeal Br. 14–18 (Claims App.) (bracketing added).

Evidence Considered

Lynch et al. (“Lynch”) US 2005/0080734 A1 Apr. 14, 2005
Nyhoff et al. (“Nyhoff”) US 2013/0041799 A1 Feb. 14, 2013

Examiner’s Rejections
(1) Claims 1, 4, 6–8, 11, 13–15, 18, 20, and 21 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to an abstract idea
without significantly more. Final Act. 3–18.
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(2) Claims 1, 4, 6–8, 11, 13–15, 18, 20, and 21 stand rejected under
35 U.S.C. § 103 as being unpatentable over Lynch and Nyhoff. Final Act.
19–27.3

ANALYSIS
35 U.S.C. § 101 Rejection
In support of the 35 U.S.C. § 101 rejection of claims 1, 4, 6–8, 11, 13–
15, 18, 20, and 21, the Examiner determines Appellant’s claims are directed
to calculating a yield, a fixed rate for an IRS leg, fixed rate payment dates
for the IRS leg, and a notional value for the IRS leg—which is “a patent
ineligible concept directed toward fundamental economic practices.” Final
Act. 4–5; see also Ans. 4–5. The Examiner also finds the claims are directed
to an abstract concept similar to “collecting information, analyzing it, and
displaying certain results of the collection and analysis.” See Electric Power
Group, LLC, v. Alstom, 830 F.3d 1350 (Fed. Cir. 2016).
The Examiner then determines the claim elements, when analyzed
individually and as an ordered combination, do not amount to significantly
more than the abstract idea. Final Act. 6–18.
Legal Framework
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court’s two-step framework articulated in Alice Corp. Pty. Ltd.
v. CLS Bank Int’l, 573 U.S. 208 (2014). First, we determine whether the

3 The Examiner’s rejection incorrectly refers to pre-America Invents Act
(“pre-AIA”) § 103(a) instead of AIA § 103. See Final Act. 19. We are
aware of no prejudice to Appellant or the Examiner resulting from this error,
and thus we consider this to be harmless error.
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claims are directed to a patent-ineligible concept: laws of nature, natural
phenomena, and abstract ideas. Alice, 573 U.S. at 216. If so, we then
proceed to the second step to consider the elements of the claims
“individually and ‘as an ordered combination’” to determine whether there
are additional elements that “‘transform the nature of the claim’ into a
patent-eligible application.” Id. at 217. In other words, the second step is to
“search for an ‘inventive concept’—i.e., an element or combination of
elements that is ‘sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [ineligible concept] itself.’” Id. at
218.
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Elec. Power Group, 830
F.3d at 1353; see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–
36 (Fed. Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015).
In an effort to achieve clarity and consistency in how the U.S. Patent
and Trademark Office (the “Office”) applies the Supreme Court’s two-step
framework, the Office has published revised guidance interpreting governing
case law and establishing a prosecution framework for all patent-eligibility
analysis under Alice and 35 U.S.C. § 101 effective as of January 7, 2019.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–
57 (Jan. 7, 2019) (“2019 Revised Guidance, 84 Fed. Reg.”).

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2019 Revised Guidance
Under the 2019 Revised Guidance, we first look under Alice step 1 or
“Step 2A” to whether the claim recites:
(1) Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., [i] mathematical concepts,
[ii] mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment,
opinion), or [iii] certain methods of organizing human
activity such as a fundamental economic practice or
managing personal behavior or relationships or interactions
between people); and

(2) Prong Two: additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–
(h)).4
See 2019 Revised Guidance, 84 Fed. Reg. 51–52, 55, Revised Step 2A,
Prong One (Abstract Idea) and Prong Two (Integration into A Practical
Application). Only if a claim: (1) recites a judicial exception, and (2) does
not integrate that exception into a practical application, do we then evaluate
whether the claim provides an “inventive concept” under Alice step 2 or
“Step 2B.” See 2019 Revised Guidance 84 Fed. Reg. 56; see also Alice, 573
U.S. at 217–18. For example, we look to whether the claim:
1) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or

2) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception.

4 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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See 2019 Revised Guidance, 84 Fed. Reg. 56.
In the briefing, Appellant refers to prior USPTO guidance regarding
§ 101, including, for example: (1) 2014 Interim Guidance on Patent Subject
Matter Eligibility, 79 Fed. Reg. 74,618 (December 16, 2014); and (2)
Memorandum on Formulating a Subject Matter Eligibility Rejection and
Evaluating the Applicant’s Response to a Subject Matter Eligibility
Rejection dated May 4, 2016. Appeal Br. 5–6. However, this prior guidance
has been superseded by the 2019 Revised Guidance. See 2019 Revised
Guidance, 84 Fed. Reg. 52. As such, our analysis will not address the
sufficiency of the Examiner’s rejection against the cited prior guidance.
Rather, our analysis will comport with the 2019 Revised Guidance as
discussed below.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Step 2A—Prong 1
Appellant argues independent claims 1, 8, and 15 together, further
providing specific arguments for claim 1. See Appeal Br. 7–9. Therefore,
we select independent claim 1 as the representative claim for the group and
address Appellant’s arguments thereto. See 37 C.F.R. § 41.37(c)(1)(iv)
(2017).
Appellant does not dispute the Examiner’s determination that claims
1, 8, and 15 are “directed toward fundamental economic practices.” Final
Act. 5. Instead, Appellant argues the claims are not directed to an abstract
idea because the Examiner’s “characterization of the claims oversimplifies
the subject matter claimed” that includes “specific process steps and/or
system components” with “several novel and non-abstract elements” such
as:
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storing, by the computer system and as a result of the matching,
data representing an executed IVSP contract, the executed IVSP
contract having a resulting futures contract leg conforming to
the futures contract parameters and a resulting IRS leg
conforming to the IRS parameters, the resulting futures contract
leg requiring delivery of a debt instrument, the resulting IRS leg
beginning at an end of the resulting futures contract leg,

as recited in claim 1 and similarly, claims 8 and 15. Appeal Br. 6–7.
Appellant also argues the independent claims “narrowly recite technological
features” and “numerous specific limitations that are also confined to certain
common characteristics” similar to the claims in McRO. Appeal Br. 8–9
(citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed.
Cir. 2016)).
Appellant’s arguments are not persuasive. At the outset, we note
Appellant’s Specification and claims describe “methods for processing data
associated with invoice swap spreads, [and] computer systems configured to
perform such methods,” where the “computer system may store data that
includes invoice swap spread (IVSP) parameters,” “receive data describing
terms, a delivery date and an invoice price for a delivered debt instrument,”
“calculate a yield . . . . a fixed rate for an IRS leg of the executed IVSP [and]
fixed rate payment dates for the IRS leg of the executed IVSP,” and
“transmit data that includes the fixed rate.” Spec. ¶¶ 3–4. For example,
Appellant’s claim 1 recites a method performed with “a computer system”
that:
[1] receiv[es] . . . buy order data representing a bid price for
an invoice swap spread (IVSP) contract conforming to
previously-stored IVSP parameters and sell order data
representing an offer price for an IVSP conforming to the IVSP
parameters, wherein the IVSP parameters include futures
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contract parameters and interest rate swap (IRS) parameters,
wherein the IVSP parameters indicate that an IVSP contract
conforming to the IVSP parameters includes a futures contract
leg conforming to futures contract parameters and an IRS leg
conforming to IRS parameters;

[2] match[es] . . . at an execution price, the buy order data and
the sell order data;

[3] stor[es] . . . as a result of the matching, data representing
an executed IVSP contract, the executed IVSP contract having a
resulting futures contract leg conforming to the futures contract
parameters and a resulting IRS leg conforming to the IRS
parameters, the resulting futures contract leg requiring delivery
of a debt instrument, the resulting IRS leg beginning at an end
of the resulting futures contract leg;

[4] receiv[es] . . . data describing terms, a delivery date and
an invoice price for the debt instrument;

[5] calculat[es] . . . a yield based on the invoice price and the
terms of the debt instrument;

[6] calculat[es] . . . based on the IRS parameters, the yield,
and the execution price, a fixed rate for the resulting IRS leg;

[7] calculat[es] . . . based on the IRS parameters and the
terms of the debt instrument, fixed rate payment dates for the
resulting IRS leg;

[8] calculat[es] . . . a notional value for the resulting IRS leg
based on a notional value of the resulting futures contract leg, a
value corresponding to an interest rate sensitivity of the
resulting futures contract leg, and a value corresponding to an
interest rate sensitivity of the resulting IRS leg; and

[9] transmit[s] . . . data including the fixed rate and the
notional value.

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Appeal Br. 14–15 (Claims App.) (bracketing added).

As correctly recognized by the Examiner, these limitations of
Appellant’s claim 1, under their broadest reasonable interpretation, recite
nothing more than “comparing new and stored information and using rules
to identify options” and “collecting information, analyzing it, and displaying
certain results of the collection and analysis” to provide financial parameters
(such as yields, interest rate parameters, fixed rate payment dates, and
notional values) for financial instruments and IRS and futures contracts,
which is a known business activity and a “fundamental economic practice[]”
in our system of commerce. Final Act. 4–5; see also Ans. 5; and Spec. ¶¶ 1–
4. Such activities are squarely within the realm of abstract ideas, like:
(1) the risk hedging in Bilski v. Kappos, 130 S.Ct. 3218 (2010); (2) the
intermediated settlement in Alice, 573 U.S. at 220; (3) verifying credit card
transactions in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1370 (Fed. Cir. 2011); (4) guaranteeing transactions as in buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014); (5) distributing products
over the Internet in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir.
2014); (6) determining a price of a product offered to a purchasing
organization in Versata Dev. Grp., Inc. v. SAP America, Inc., 793 F.3d 1306
(Fed. Cir. 2015); and (7) pricing a product for sale in OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015). Collecting, analyzing,
and transmitting selected securities or financial parameters is also a building
block of a market economy and, like risk hedging and intermediated
settlement, is an “abstract idea” beyond the scope of 35 U.S.C. § 101. See
Alice, 573 U.S. at 220.
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We, therefore, conclude limitations [1]–[9] in representative claim 1,
and similar limitations in grouped claims 8 and 15, recite collecting,
analyzing, and transmitting selected securities and their financial parameters,
which is a fundamental economic practice and one of the certain methods of
organizing human activity identified in the Revised Guidance, and therefore,
an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. 52 (Revised Step
2A, Prong One), (Describing an abstract idea category of “[c]ertain methods
of organizing human activity—fundamental economic principles or practices
. . . commercial or legal interactions (including . . . advertising, marketing or
sales activities or behaviors; business relations).”), and 54; see also Final
Act. 5.
Alternatively, matching [at an execution price, the buy order data and
the sell order data], calculating [a yield based on the invoice price and the
terms of the debt instrument], calculating [based on the IRS parameters, the
yield, and the execution price, a fixed rate for the resulting IRS leg],
calculating [based on the IRS parameters and the terms of the debt
instrument, fixed rate payment dates for the resulting IRS leg], and
calculating [a notional value for the resulting IRS leg based on a notional
value of the resulting futures contract leg, a value corresponding to an
interest rate sensitivity of the resulting futures contract leg, and a value
corresponding to an interest rate sensitivity of the resulting IRS leg] are
mathematical operations and calculations for determining financial
parameters of financial instruments and contracts—a subject matter that falls
within another of the three groupings of abstract ideas identified in the
Revised Guidance. See Revised Guidance, 84 Fed. Reg. 52 (Describing an
abstract idea category of “Mathematical concepts—mathematical
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relationships, mathematical formulas or equations, mathematical
calculations.”).
As further recognized by the Examiner, collecting, analyzing, and
transmitting selected securities and their financial parameters is also
analogous to the claims identified by the Federal Circuit as directed to an
abstract idea in Electric Power Group. Final Act. 5; see also Ans. 5;
Electric Power Group, 830 F.3d at 1350 (holding that the concept of
“collecting information, analyzing it, and displaying certain results of the
collection and analysis” is an abstract idea under § 101). According to the
Federal Circuit, “collecting information, including when limited to particular
content (which does not change its character as information), as within the
realm of abstract ideas.” See, e.g., Electric Power Group, 830 F.3d at 1353;
see also Internet Patents Corp., 790 F.3d at 1346; OIP Techs, 788 F.3d at
1363; Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l
Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); Digitech Image Techs., LLC v.
Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); and
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d at 1370. The Federal
Circuit has also 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. See, e.g., Content Extraction, 776 F.3d at
1347; see also Ultramercial, 772 F.3d at 715.
Step 2A—Prong 2 (Integration into Practical Application)
Under Revised Step 2A, Prong Two of the Revised Guidance, we must
determine if the claims (i.e., additional limitations beyond the judicial
exception) integrate the judicial exception into a practical application.
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However, we discern no additional element (or combination of elements)
recited in Appellant’s representative independent claim 1 (and similarly,
claims 8 and 15) that integrates the judicial exception into a practical
application. See Revised Guidance, 84 Fed. Reg. 54–55 (Prong Two). For
example, Appellant’s additional elements (i.e., computer system, computer-
readable media, processor, and memory) recited in claim 1 (and similarly,
claims 8 and 15) do not (1) improve the functioning of a computer or other
technology, (2) are not applied with any particular machine (except for
generic computer components), (3) do not effect a transformation of a
particular article to a different state, and (4) are not applied in any
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(a)–(c), (e)–(h).
Appellant argues the independent claims “include specific process
steps and/or system components” and “narrowly recite technological
features.” Appeal Br. 7–8. We remain unpersuaded. Appellant’s claim 1
(and similarly, claims 8 and 15) merely links the use of a judicial exception
to a particular technological environment. That is, although Appellant’s
claims recite hardware components (generic processor, computer system,
computer-readable media, and memory), the processor, computer system,
computer-readable media, and memory are configured to perform numerous
real-world functions and operations that computer components would
normally be expected to perform, adding nothing of substance to the
underlying abstract idea. Ans. 8–9. It is clear from the claims and the
Specification (describing “a ‘computer system’ [that] could be a single
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computer or could comprise multiple computers,” “a computer device [that]
uses a 64-bit processor,” a “computer system 100 [that] may be implemented
with one or more mainframe, desktop or other computers,” and “[a]ny
suitable computer readable media may be utilized, including various types of
non-transitory computer readable storage media such as hard disks, CD-
ROMs, optical storage devices, magnetic storage devices, FLASH memory,
and/or any combination thereof”), these limitations require no improved
processor, computer, computer-readable media, or memory. See Spec.
¶¶ 11–12, 15; see also Ans. 8–9. Thus, the claims’ limitations are not
indicative of “integration into a practical application.” Rather, the processor,
computer systems, and memory are readily available computing elements
using their already available basic functions as tools in executing the
claimed financial processing for invoice swap spreads. See SAP Am., Inc. v.
InvestPic LLC, 898 F. 3d 1161 (Fed. Cir. 2018). The claimed generic
computer components are simply the “automation of the fundamental
economic concept.” See OIP Techs., 788 F.3d at 1362–63. “[M]erely
requir[ing] generic computer implementation,” “does not move into [§] 101
eligibility territory.” See buySAFE, 765 F.3d at 1354.
We also note Appellant’s reliance on McRO and Enfish is misplaced.
See Appeal Br. 8–9. For example, McRO’s ’576 patent (U.S. Patent No.
6,307,576) describes computer software for matching audio to a 3D
animated mouth movement to provide lip-synched animation. McRO’s
claims contain (i) specific limitations regarding a set of rules that “define[] a
morph weight set stream as a function of phoneme sequence and times
associated with said phoneme sequence” to enable computers to produce
“accurate and realistic lip synchronization and facial expressions in animated
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characters” (McRO, 837 F.3d at 1313) and, when viewed as a whole, are
directed to (ii) a “technological improvement over the existing, manual 3–D
animation techniques” that uses “limited rules in a process specifically
designed to achieve an improved technological result in conventional
industry practice.” Id. at 1316. Enfish’s data storage and retrieval method
and system recites a “self-referential table [for a computer database] [which]
is a specific type of data structure designed to improve the way a computer
stores and retrieves data in memory.” Enfish, 822 F.3d at 1336, 1339.
In contrast to Enfish and McRO, Appellant’s Specification and claims
do not describe technological improvements, or a specific improvement to
the way computers store and retrieve data in memory. See Enfish, 822 F.3d
at 1336, 1339; see also Ans. 6, 8. Rather, Appellant’s Specification and
claims describe “methods for processing data associated with invoice swap
spreads, [and] computer systems configured to perform such methods,”
where the computer system stores data that includes invoice swap spread
(IVSP) parameters and calculates yields and fixed rate payment dates for the
IRS legs of executed IVSPs. Spec. ¶¶ 3–4.
For business-centric inventions such as Appellant’s invention
involving collecting, analyzing, and transmitting selected securities and
financial parameters and other forms of business data, the “integration into a
practical application” prong requires consideration of whether the claims
purport to provide “a technical solution to a technical problem” as required
by the Federal Circuit’s precedential decisions in (1) DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) and (2) Amdocs
(Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). See
MPEP § 2106.05(a).
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For example, the Federal Circuit found DDR’s claims are patent-
eligible under 35 U.S.C. § 101 because DDR’s claims: (1) do not merely
recite “the performance of some business practice known from the pre-
Internet world” previously disclosed in Bilski and Alice; but instead (2)
provide a technical solution to a technical problem unique to the Internet,
i.e., a “solution . . . necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.”
DDR, 773 F.3d at 1257. Likewise, the Federal Circuit also found Amdocs’
claims patent-eligible under 35 U.S.C. § 101 because like DDR, Amdocs’
claims “entail[] an unconventional technological solution (enhancing data in
a distributed fashion) to a technological problem (massive record flows
which previously required massive databases)” and “improve the
performance of the system itself.” Amdocs, 841 F.3d at 1300, 1302.
In contrast, Appellant’s invention, involving collecting, analyzing,
and transmitting selected securities and financial parameters and other forms
of business data, does not provide any “technical solution to a technical
problem” as contemplated by the Federal Circuit in DDR and Amdocs. See
MPEP § 2106.05(a). For example, Appellant’s claimed matching, storing,
and calculating financial parameters for order data and contracts does not
provide a technical solution to a technical problem unique to the Internet,
i.e., a “solution . . . necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.”
DDR, 773 F.3d at 1257. Nor does Appellant’s invention entail, like Amdocs,
any “unconventional technological solution (enhancing data in a distributed
fashion) to a technological problem (massive record flows which previously
required massive databases)” and “improve the performance of the system
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itself.” Amdocs, 841 F.3d at 1300, 1302. The focus of Appellant’s
invention is not to improve the performance of computers or any underlying
technology; instead, the focus is to use generic computer components as a
tool to solve a business problem by gathering, analyzing, and transmitting
business/investment data. Ans. 6.
A claim for a new abstract idea is still an abstract idea. See Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). “No
matter how much of an advance in the finance field the claims recite, the
advance lies entirely in the realm of abstract ideas, with no plausibly alleged
innovation in the non-abstract application realm.” See SAP America, Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).
For these reasons, we are not persuaded that Appellant’s “additional
elements” recited in claims 1, 4, 6–8, 11, 13–15, 18, 20, and 21 integrate the
abstract idea into a practical application.

Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance

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.
See 2019 Revised Guidance, 84 Fed. Reg. 56. However, we find no element
or combination of elements recited in Appellant’s claims 1, 8, and 15 that
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contain any “inventive concept” or add anything “significantly more” to
transform the abstract concept into a patent-eligible application. Alice, 573
U.S. 208 at 221.
Appellant argues claims 1, 8, and 15 recite significantly more than an
abstract idea because the “claims recite improved techniques and systems for
processing invoice swap spread parameters.” Appeal Br. 9. For example,
Appellant argues claim 1’s “single matching operation. . . . allows more
efficient use of the computer system” because, “[i]nstead of consuming
computational resources to match buy and sell orders and create a futures
contract, and then later consuming additional computational resources to
identify parties desiring a particular type of IRS and to create that IRS,” “a
single matching operation can be used to create a futures contract and an IRS
related to that futures contract.” Id.
We remain unpersuaded because utilizing generic computer
components to process securities and financial contracts (as in Appellant’s
claim 1) does not alone transform an otherwise abstract idea into patent-
eligible subject matter. As our reviewing court has observed, “after Alice,
there can remain no doubt: recitation of generic computer limitations does
not make an otherwise ineligible claim patent-eligible.” DDR, 773 F.3d at
1256 (citing Alice, 573 U.S. at 222). Additionally, “relying on a computer to
perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible,” and “the fact that the required calculations
could be performed more efficiently via a computer does not materially alter
the patent eligibility of the claimed subject matter.” See OIP Tech., 788
F.3d at 1363; see also Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of
Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012).
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Appellant also argues the claims are not abstract because they recite
“several novel” elements “not found in the prior art.” Appeal Br. 7. This
improperly conflates the test for 35 U.S.C. § 101 with the separate tests for
35 U.S.C. §§ 102 and 103. See, e.g., Genetic Techs. Ltd. v. Merial L.L.C.,
818 F.3d 1369, 1376 (Fed. Cir. 2016) (“[U]nder the Mayo/Alice framework,
a claim directed to a newly discovered law of nature (or natural phenomenon
or abstract idea) cannot rely on the novelty of that discovery for the
inventive concept necessary for patent eligibility.”). As the Supreme Court
emphasizes, “[t]he ‘novelty’ of any element or steps in a process, or even of
the process itself, is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly patentable
subject matter.” Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (emphasis
added). Thus, a novel and nonobvious claim directed to a purely-abstract
idea is, nonetheless, patent-ineligible. See Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 89–91 (2012).
Lastly, Appellant argues the claims are patent-eligible because the
“claims do not preempt the use in all fields” and “do not wholly preempt any
particular technological field.” Appeal Br. 7–9 (citing McRO, 837 F.3d at
1299). We disagree. The lack of preemption is a necessary clue for patent
eligibility, but it is not sufficient for patent eligibility. As the McRO court
explicitly recognized, “the absence of complete preemption does not
demonstrate patent eligibility.” See McRO, 837 F.3d at 1315 (quoting
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015)); see also Ans. 7–8. Furthermore, “[w]here a patent’s claims are
deemed only to disclose patent ineligible subject matter” under the
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Alice/Mayo framework, “preemption concerns are fully addressed and made
moot.” Ariosa, 788 F.3d at 1379.
Because Appellant’s independent claims 1, 8, and 15 are directed to a
patent-ineligible abstract concept and do not recite an “inventive concept” or
provide a solution to a technical problem under the second step of the Alice
analysis, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
representative independent claim 1 and claims 8 and 15 not separately
argued, and their dependent claims 4, 6, 7, 11, 13, 14, 18, 20, and 21, not
separately argued.

35 U.S.C. § 103 Rejection
The Examiner, among other things, finds Lynch teaches “storing, by
the computer system and as a result of the matching, data representing an
executed IVSP contract,” where the executed IVSP contract has “a resulting
futures contract leg conforming to the futures contract parameters and a
resulting IRS leg conforming to the IRS parameters, the resulting futures
contract leg requiring delivery of a debt instrument, the resulting IRS leg
beginning at an end of the resulting futures contract leg,” as recited in claim
1. Final Act. 20 (citing Lynch ¶ 57); see also Ans. 10–12 (citing Lynch
¶ 18). We do not agree.
We agree with Appellant’s arguments that Lynch does not teach or
suggest storing, as a result of the matching, data representing an “executed
IVSP [(invoice swap spread)] contract” that has (1) “a resulting futures
contract leg conforming to the futures contract parameters . . . the resulting
futures contract leg requiring delivery of a debt instrument” and (2) “a
resulting IRS [(interest rate swap)] leg conforming to the IRS parameters . . .
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the resulting IRS leg beginning at an end of the resulting futures contract
leg,” as recited in claim 1. Appeal Br. 10–11.
As Appellant explains, Lynch merely describes “an exchange that
facilitates trading of a contract that requires physical delivery of a
predetermined notional of a note,” but “Lynch does not teach or suggest a
single executed contract that has both a resulting futures contract leg and a
resulting IRS leg that begins at the end of the resulting futures contract leg.”
Appeal Br. 10–11. For example, paragraph 18 of Lynch merely describes
“interest rate swaps . . . . settled through cash payments based on the
valuation of predetermined notional interest rate swaps,” but does not teach
an executed IVSP contract having both a resulting futures contract leg and a
resulting IRS leg conforming to IRS parameters, as claimed. See Lynch
¶ 18. Paragraph 57 of Lynch merely describes executing market orders and
limit orders, but does not describe executing IVSP contracts. See Lynch
¶ 57. Additionally, the Examiner has not responded to Appellant’s
arguments in the Answer. See Ans. 10–12 (merely reproducing paragraphs
18 and 57 of Lynch).
The Examiner also has not shown that the additional teachings of
Nyhoff make up for the above-noted deficiencies of Lynch. Appeal Br. 11.
Nyhoff is concerned with Forward Rate Agreements (FRAs) which “differ
from interest rate swaps (‘swaps’) in that payment is only made once at
maturity,” but does not teach an executed IVSP contract having both a
resulting futures contract leg conforming to futures contract parameters and
a resulting IRS leg conforming to IRS parameters as claimed. See Nyhoff
¶¶ 1–2.
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Thus, for the reasons set forth above, we do not sustain the
Examiner’s obviousness rejection of independent claim 1, independent
claims 8 and 15, argued for substantially the same reasons as claim 1, and
claims 4, 6, 7, 11, 13, 14, 18, 20, and 21 dependent therefrom. Appeal Br.
12.5
CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting claims 1, 4, 6–8, 11, 13–15, 18, 20, and 21
under 35 U.S.C. § 101, but has demonstrated the Examiner erred in rejecting
claims 1, 4, 6–8, 11, 13–15, 18, 20, and 21 under 35 U.S.C. § 103.

DECISION SUMMARY
As such, we affirm the Examiner’s rejection of claims 1, 4, 6–8, 11,
13–15, 18, 20, and 21 under 35 U.S.C. § 101, but reverse the Examiner’s

5 In the event of any further prosecution, we suggest the Examiner address
whether the types of securities or contracts—such as an invoice swap spread
(IVSP), interest rate swap (IRS), or futures contract in claim 1—are
nonfunctional descriptive material, e.g., whether the types of contracts or
securities affect the method steps performed by independent claim 1. See Ex
parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) (“[T]he
nature of the information being manipulated does not lend patentability to an
otherwise unpatentable computer-implemented product or process.”); and Ex
parte Curry, 84 USPQ2d 1272, 1274 (BPAI 2005) (informative)
(“Nonfunctional descriptive material cannot render nonobvious an invention
that would have otherwise been obvious.”); aff’d, No. 06–1003 (Fed. Cir.
June 12, 2006) (Rule 36).
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rejection of claims 1, 4, 6–8, 11, 13–15, 18, 20, and 21 under 35 U.S.C.
§ 103.

In summary:
Claims
Rejected
35 U.S.C.§ Basis Affirmed Reversed
1, 4, 6–8, 11, 13–
15, 18, 20, 21
101 non-statutory 1, 4, 6–8, 11,
13–15, 18,
20, 21

1, 4, 6–8, 11, 13–
15, 18, 20, 21
103 Lynch, Nyhoff 1, 4, 6–8,
11, 13–15,
18, 20, 21
Overall Outcome 1, 4, 6–8, 11,
13–15, 18,
20, 21

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).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED