Joseph M. Asher et al.

Patent Trials and Appeals Board

Dec 18, 2019

13245142 - (D) (P.T.A.B. Dec. 18, 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.
13/245,142 09/26/2011 JOSEPH M. ASHER 04-6191-C3 1099
63710 7590 12/18/2019
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
OJIAKU, CHIKAODINAKA
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
12/18/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
lkorovich@cantor.com
patentdocketing@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH M. ASHER and HOWARD W. LUTNICK

Appeal 2018–008404
Application 13/245,142
Technology Center 3600

BEFORE HUBERT C. LORIN, BRADLEY B. BAYAT, and
AMEE A. SHAH, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–25, 27, and 28. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as CFPH, L.P.
Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claimed subject matter “relates generally to systems and methods
for financial investments” (Spec., 1:6). Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of operating an electronic communicably-coupled
system distributed over a network, comprising:
listing, by a computing device of the electronic
communicably-coupled system, a derivate contract for
secondary trading on a secondary market for trading financial
instruments;
storing, by the computing device, a logical representation
of the derivative contract in a data structure in memory of the
computing device;
providing, by the computing device through the network,
data to interfaces through which a plurality of sellers may submit
information regarding the derivative contract, in which the
interfaces include a plurality of interactive fields that may be
operated by the plurality of sellers to enter commands, in which
the interfaces include graphical user interfaces of sellers’ cellular
telephones, in which the derivative contract relates to one or
more respective rights in one or more respective revenues of one
or more respective entertainment events produced by one or
more respective entertainment companies;
receiving, from the sellers[’] cellular telephones by the
computing device and through the network, respective offers to
sell respective numbers of the derivative contract for respective
prices, in which a holder of the derivative contract owns a right
to a first payment from a first entertainment company when a
first period of time has ended, in which the payment includes a
portion of a revenue earned by a first entertainment event
produced by the first entertainment company during at least a
portion of the first period of time, in which the first derivative
contract does not grant an equity right in the first entertainment
company to the holder;
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presenting, by the computing device through the network,
an indication of the first derivative contract to a plurality of
potential buyers through graphical user interfaces of buyers’
devices, in which the indication identifies the first period of time,
the first entertainment event, and the portion of the revenue;
receiving, from a buyer by the computing device through
the network, a bid of a first amount of money to buy a first
amount of the derivative contracts for a first price;
in response to receiving the offers and the bid, performing,
by the computing device, an exchange of the first derivative
contract between the buyer and the at least one of the plurality
of sellers; and
initiating, by the computing device, a provision of the first
payment to the buyer from the first entertainment company when
the first period of time has ended.
REJECTIONS
Claims 1–25, 27, and 28 are rejected under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter.
Claims 1–25, 27, and 28 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 56–68 of co-pending Application No. 12/408,370, now U.S.
7,774,258.

OPINION
The rejection of claims 1–25, 27, and 28 under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter.
Appellant argued the claims as a group. See Appeal Br. 5–11. We
select claim 1 as the representative claim for this group, and the remaining
claims 2–25, 27, and 28 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(iv).
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Preliminary comment
Previous guidance on patent subject matter eligibility have been
superseded by the 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019), hereinafter “2019 Revised 101 Guidance”.
Id. at 51 (“Eligibility–related guidance issued prior to the Ninth Edition, R–
08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”)
Accordingly, we will not address arguments on the sufficiency of the
Examiner’s position relative to prior guidance, but rather our analysis that
follows will comport with the 2019 Revised 101 Guidance.
Introduction
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor.”
In that regard, claim 1 covers a “process” and is thus statutory subject
matter for which a patent may be obtained.2 This is not in dispute.
However, the § 101 provision “contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014)(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569
U.S. 576, 589 (2013)).

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether “a claim is to a statutory category.” Id. at 53.
See also sentence bridging pages 53 and 54 (“consider[ ] whether the
claimed subject matter falls within the four statutory categories of patentable
subject matter identified by 35 U.S.C. 101 . . . .”).
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In that regard, notwithstanding claim 1 covers statutory subject
matter, the Examiner has raised a question of patent–eligibility on the
ground that claim 1 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Id. at 217.
Alice step one – the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Id. at 218
(emphasis added).
The Examiner determined that claim 1 “is directed towards an abstract
idea of funding, a fundamental economic practice.” Final Act. 2
The innovation as claimed appears to be directed to the user’s
objective (investing in derivative contracts) rather than the
technological solution to a technological problem wherein the
boundaries are defined by the inventor’s disclosure. (See, Mayo,
132 S.Ct. 1289, 1303 – “the underlying functional concern . . . is
a relative one: how much future innovation is foreclosed relative
to the contribution of the inventor.”).
…
The[ ] steps describe the concept of funding which
corresponds to concepts identified as abstract ideas by courts
such as real-time monitoring gathering and display of data
(Electric Power Group) and data recognition and storage
(Content Extraction). The claims as recited are nothing more
than a set of instructions which are not statutory under 101.
All of these concepts relate to data storage and exchange
in which different types of data are accessed and transmitted
between transacting parties or devices. Analyzing instructions
and rules to determine if certain bid requirements have been met
does not necessarily result in a transformation of the abstract
idea. (see Content Extraction and Transmission LLC v. Wells
Fargo Bank, 776 F.3d 1343, 1347, 2014 BL 361098, 113
U.S.P.Q.2d 1354 (Fed. Cir. 2014) - court identified as an abstract
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idea “1) collecting data, 2) recognizing certain data within the
collected data set and 3) storing that recognized data in a
memory”).
Final Act. 4–5.
Appellant argues that “the claims clearly recite improvements to
technology of computerized and networked trading and interfaces. Among
other things, speed, interface efficiency, and data integrity are all
technological improvements addressed by the claims that are rooted in
computers and networking.” (Appeal Br. 10). See also id. at 8 (“The claims
here . . . are directed to an improvement in computerized trading systems.
By arranging computer components and functionality in this manner trading
systems operate more efficiently and quickly. These claims clearly add
functionality to a computer that was previously not available
and therefore are not directed to an abstract idea.”)
Accordingly, there is a dispute over whether claim 1 is directed to an
abstract idea. Specifically, is claim 1 directed to funding (Final Act. 2) or an
improvement to computer technology (see, e.g., Appeal Br. 8 and 10)?
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Claim Construction3
We consider the claim as a whole,4 giving it the broadest reasonable
construction5 as one of ordinary skill in the art would have interpreted it in
light of the specification6 at the time of filing.
According to claim 1, an “electronic communicably-coupled system
distributed over a network” is used for
1. “listing . . . [information A];”
2. “storing . . [information B] in a data structure in memory of the
computing device;”

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

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

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

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

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3. providing . . . data to interfaces through which a plurality of sellers
may submit information regarding information [A], in which the
interfaces include a plurality of interactive fields that may be
operated by the plurality of sellers to enter commands, in which the
interfaces include graphical user interfaces of sellers’ cellular
telephones, in which [information A] relates to [information C];
4. “receiving, from the sellers cellular telephones . . . [information
D]”;
5. “presenting . . . [information E] to a plurality of potential buyers
through graphical user interfaces of buyers’ devices, in which
[information E] identifies [information F]”;
6. “receiving, from a buyer . . . , [information G]”;
7. “in response to receiving [information D and G], performing . . . an
exchange of the first derivative contract between the buyer and the
at least one of the plurality of sellers”; and,
8. “initiating . . . a provision of the first payment to the buyer from the
first entertainment company when the first period of time has
ended”;

where,

A is “a derivate contract for secondary trading on a secondary
market for trading financial instruments”;
B is “a logical representation of the derivative contract”;
C is “one or more respective rights in one or more respective
revenues of one or more respective entertainment events produced by
one or more respective entertainment companies”;
D is respective offers to sell respective numbers of the derivative
contract for respective prices, in which a holder of the derivative
contract owns a right to a first payment from a first entertainment
company when a first period of time has ended, in which the payment
includes a portion of a revenue earned by a first entertainment event
produced by the first entertainment company during at least a portion
of the first period of time, in which the first derivative contract does not
grant an equity right in the first entertainment company to the holder;
E is “an indication of the first derivative contract”;
F is “the first period of time, the first entertainment event, and
the portion of the revenue”; and,
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G is “a bid of a first amount of money to buy a first amount of
the derivative contracts for a first price”.
Claim 1 is reasonably broadly construed as covering a method of
processing various types of information between seller cellular user
interfaces and buyer interfaces over an “electronic communicably-coupled
system distributed over a network,” the processing comprising “listing,”
“storing,” “providing,” “receiving,” and “presenting” the various types of
information, and the “providing” involving providing data to interfaces that
include graphical user interfaces of sellers’ cellular telephones and a
plurality of interactive fields that may be operated by the plurality of sellers
to enter commands. The method results in a first derivative contract
between a buyer and at least one of a plurality of sellers being exchanged
and a provision of a first payment to the buyer from a first entertainment
company when a first period of time has ended being initiated.
The Specification states that the invention “relates generally to
systems and methods for financial investments.” Spec. 1:6. The
Specification explains that funding of entertainment events may be difficult
due to, for example, a lack of information.
BACKGROUND OF THE INVENTION
Current entertainment companies are typically
corporations or partnerships that fund, produce, or otherwise
participate in the creation or organization of many entertainment
events. These entertainment events normally require various
amounts of funding based on a number of criteria. For example,
if the entertainment event is a movie, then the level of funding
may be based on the chosen director for the film, the selected
actors, the special effects or Computer Generated Imagery (CGI),
locations desired for the film, appropriate advertising, and many
other factors. In another example, if the entertainment event is a
concert, then the level of funding may be based on an arena,
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security at the arena, transportation costs for the performing
artists, and such. Occasionally, funding for one of the events
may be more difficult to obtain because of poor public or
industry perception of the project, lack of information about or
knowledge of the project, inaccessibility to the funding process
by interested investors, possible exclusivity of the particular
entertainment industry, the particular funding needs being too
great for one or a few investors, or for any other reason. Once
funding is obtained and the event is produced, created, hosted, or
otherwise premiered, the entertainment company receives at
least portion of the revenues. Typically, as in the case of movies,
this portion is based on the ticket sales of the movie, less
distributor fees.
Spec. 2:1–18. The Specification (3:1–25) sets out embodiments of the
invention whereby securities indexed to entertainment revenue are provided.
Another embodiment is “an electronic system for offering, purchasing,
selling, trading, searching, or otherwise processing securities associated with
entertainment events.” Spec. 3:26–28.
Given the method as claimed as reasonably broadly construed above
and in light of the Specification’s description of the invention as being
related to funding entertainment events, based on the record before us, we
reasonably broadly construe claim 1 as being directed to a financing scheme
using an “electronic communicably-coupled system distributed over a
network”.
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The Abstract Idea7
Above, where we reproduce claim 1, we identify in italics the
limitations we believe recite an abstract idea.8 Based on our claim
construction analysis (above), we determine that the identified limitations
describe a financing scheme using an “electronic communicably-coupled
system distributed over a network”. Financing is a fundamental economic
practice as well as a commercial interaction and therefore it falls within the
enumerated “Certain methods of organizing human activity” grouping of
abstract ideas set forth in the 2019 Revised 101 Guidance.9

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

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

9 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” Id. at 54. This case implicates subject
matter grouping “(b)”:
(b) Certain methods of organizing human activity—
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
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Improvement In the Functioning of a Computer10 (Appellants’
Argument)
The Examiner’s characterization of what the claim is directed to
(funding) is similar to ours (financing using an “electronic communicably-
coupled system distributed over a network”), albeit at a lower level of
abstraction. “An abstract idea can generally be described at different levels
of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed.
Cir. 2016). Cf. Id. at 1241 (The Board’s “slight revision of its abstract idea
analysis does not impact the patentability analysis.”)
We have reviewed the record and are unpersuaded as to error in our or
the Examiner’s characterization of what claim 1 is directed to.
A principle argument Appellant makes is that the claimed subject
matter is not directed to an abstract idea but rather is “directed to an

relationships or interactions between people (including social
activities, teaching, and following rules or instructions);
Id. at 52.

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

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improvement in computerized trading systems. By arranging computer
components and functionality in this manner trading systems operate more
efficiently and quickly.” Appeal Br. 8. There is a single thread to
Appellant’s contentions; that is, “[t]hese claims clearly add functionality to a
computer that was previously not available” (id.). Appellant cites Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), BASCOM
Global Internet Services v AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016), and DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014) as legal support that in being directed to a technological
improvement the claims are “therefore are not directed to an abstract idea”
(id.); see also id. at 7–10.
The record does not adequately support the argument that the claimed
system provides an improvement in computer functionality.
The Specification lists generic components for forming an “electronic
communicably-coupled system distributed over a network” that may be used
to practice the claimed method. See Spec. 9:4–11:16. It may be composed
of a network (108, see Fig. 1)), such as the “Internet”, and a computer (102),
such as “a personal computer.” Id. at 9:12 and 22.
The Specification goes on to say:
System 100 has several important technical advantages.
One technical advantage of system 100 is that it increases
accessibility to the funding process through the use of computers
102 architected using networks 108 to connect investors with
facilitators and those seeking to fund a project. This provides an
opportunity for a wider range of investors to participate in at least
some portion of the entertainment industry, whether movies,
sports, music, or others. This may also increase the reliability
and accuracy of transactions, thereby increasing transaction
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volume. Moreover, this may provide for real time
communications among parties, thereby increasing the speed and
efficiency of transaction processing.
Id. at 11:17–25. This is consistent with Appellant’s contentions in the brief.
But the financing scheme that is claimed would not be expected to
functionally affect an “electronic communicably-coupled system distributed
over a network” (100) composed of the Internet (108) and a personal
computer (102). Without more, one of ordinary skill in the art reading the
claims in light of the Specification would expect the “electronic
communicably-coupled system distributed over a network” (e.g., the
combination of the Internet and a personal computer) to be the same when
implementing the scheme as claimed as it was before. The evidence that the
financing scheme as claimed affects these components so that the “electronic
communicably-coupled system distributed over a network” is functionally
improved is inadequate given the understanding one of ordinary skill in the
art would have had at the time of filing with respect to how a personal
computer connected to the Internet one of ordinary skill in the art commonly
operates. We understand that the invention increases accessibility to a
funding process and opportunities to participate in funding a project, but this
improves traders’ experience, not the computer’s functionality. We also
understand the benefit of increasing the reliability and accuracy of
transactions, as well as increasing transaction volume. Real time
communications among parties, thereby increasing the speed and efficiency
of transaction processing, is also beneficial. But there is insufficient
evidence that said benefits are attributable to an improvement in computer
functionality. One of ordinary skill in the art would know that using a
personal computer connected to the Internet as opposed to financing using
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more traditional means (e.g., telephone) yields the types of benefits the
Specification discloses, namely transactions are faster and more reliable.
We note Appellant’s citation of Trading Technologies International,
Inc. v. CQG, Inc., 675 Fed.Appx. 1001 (Fed. Cir. 2017). Appeal Br. 10.
This is a nonprecedential decision. Please see instead the precedential
Trading Technologies International, Inc. v. IBG LLC, 921 F.3d 1378 (Fed.
Cir. 2019). It makes the same point we make above; that is, here the
evidence weighs in favor of the view that the claim’s focus is on
nontechnical improvements. Id. at 1384 (“The claims are focused on
providing information to traders in a way that helps them process
information more quickly, ‘556 patent at 2:26–39, not on improving
computers or technology.”)
We have carefully reviewed the claim. Per our previous claim
construction analysis, claim 1 is reasonably broadly construed as covering a
method of processing various types of information between seller cellular
user interfaces and buyer interfaces over an “electronic communicably-
coupled system distributed over a network,” the processing comprising
“listing,” “storing,” “providing,” “receiving,” and “presenting” the various
types of information and the “providing” involving providing data to
interfaces that include graphical user interfaces of sellers’ cellular telephones
and a plurality of interactive fields that may be operated by the plurality of
sellers to enter commands, resulting in a first derivative contract between a
buyer and at least one of a plurality of sellers being exchanged and a
provision of a first payment to the buyer from a first entertainment company
when a first period of time has ended being initiated. We see no specific
asserted improvement in computer capabilities recited in the claim. Rather
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than being directed to any specific asserted improvement in computer
capabilities, the claim and specification support the opposite view — that the
claimed subject matter is directed to a financing scheme using an “electronic
communicably-coupled system distributed over a network,” an environment
that was well known at the time the application was filed. See Spec., 9:4–
11–16.
The claim provides no additional structural details11 that would
distinguish any of the recited (1) “electronic communicably-coupled system
distributed over a network”; (2) “computing device” of said system; (3)
“interfaces including] a plurality of interactive fields that may be operated
by [a] plurality of sellers to enter commands, in which the interfaces include
graphical user interfaces of sellers’ cellular telephones”; and, (4) “graphical
user interfaces of buyers’ devices” from those that were well known at the
time the application was filed. Id.
With respect to the “listing,” “storing,” “providing,” “receiving,” and
“presenting” functions, among others, the Specification attributes no special
meaning to any of these operations, individually or in the combination as
claimed. In our view, consistent with the Specification, these are common
processing functions that one of ordinary skill in the art at the time of the
invention would have known generic computers (e.g., a laptop computer)
were capable of performing and would have associated with generic

11 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 Fed. Appx. 950, 954 (Fed.
Cir. 2018) (Nonprecedential). “Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”
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computers. Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015):
Beyond the abstract idea of offer-based price optimization, the claims
merely recite “well-understood, routine conventional activit[ies],”
either by requiring conventional computer activities or routine data-
gathering steps. Alice, 134 S. Ct. at 2359 (quoting Mayo, 132 S.Ct. at
1294) (alterations in original). . . . For example, claim 1 recites
“sending a first set of electronic messages over a network to devices,”
the devices being “programmed to communicate,” storing test results
in a “machine-readable medium,” and “using a computerized system
. . . to automatically determine” an estimated outcome and setting a
price. Just as in Alice, “all of these computer functions are ‘well-
understood, routine, conventional activit[ies]’ previously known to the
industry.” Alice, 134 S.Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294)
(alterations in original); see also buySAFE[, Inc. v. Google, Inc.], 765
F.3d [1350,] 1355 [(Fed. Cir. 2014)] (“That a computer receives and
sends the information over a network—with no further specification—
is not even arguably inventive.”).
At best, the system distinguishes over other known generic systems
(e.g., an Internet–laptop computer) at the time the application was filed in
the type of electronic information being processed — that is, for example,
derivative contracts. But that alone is not patentably consequential. This is
so because “[c]laim limitations directed to the content of information and
lacking a requisite functional relationship are not entitled to patentable
weight because such information is not patent eligible subject matter under
35 U.S.C. § 101.” Praxair Distribution, Inc. v. Mallinckrodt Hospital
Products IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018).
Accordingly, within the meaning of the 2019 Revised 101 Guidance,
we find there is no integration of the abstract idea into a practical
application.
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We have considered Appellant’s other arguments challenging the
Examiner’s determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner’s determination that claim 1 is directed to an abstract idea.
Alice step two — Does the Claim Provide an Inventive Concept?12
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 221 (quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined, inter alia, that the
The claim(s) 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 than the abstract idea.
Final Act. 5. We agree.
We addressed the matter of whether there were any purported specific
asserted improvements in computer capabilities in our analysis above under
step one of the Alice framework. This is consistent with the case law. See

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

[I]f a claim has been determined to be directed to a judicial exception
under revised Step 2A, examiners should then evaluate the additional
elements individually and in combination under Step 2B to determine
whether they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself).
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Ancora, 908 F.3d at 1347 (“We have several times held claims to pass
muster under Alice step one when sufficiently focused on such
improvements.”) Such an argument can also challenge a determination
under step two of the Alice framework. See buySAFE, 765 F.3d at 1354–55.
“[R]ecent Federal Circuit jurisprudence has indicated that eligible subject
matter can often be identified either at the first or the second step of the
Alice/Mayo [framework].” 2019 Revised 101 Guidance at 53; see also id. n.
17.
Be that as it may, we are unpersuaded that claim 1 presents an element
or combination of elements indicative of a specific asserted improvement in
computer capabilities, thereby rendering the claimed subject matter
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon a financing scheme using an “electronic communicably-
coupled system distributed over a network”.
We have reviewed the Specification and, as explained above, we find
the evidence of an improvement in computer functionality as a result of
performing the functions as broadly as they are recited to be inadequate.
We cited the Specification in our earlier discussion. It is intrinsic
evidence that the recited (1) “electronic communicably-coupled system
distributed over a network”; (2) “computing device” of said system; (3)
“interfaces including a plurality of interactive fields that may be operated by
[a] plurality of sellers to enter commands, in which the interfaces include
graphical user interfaces of sellers’ cellular telephones”; and, (4) “graphical
user interfaces of buyers’ devices” individually and in the arrangement as
claimed are conventional. In doing so, we have followed “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
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Subject Matter Eligibility Decision (Berkheimer v. HP Inc.[, 881 F.3d 1360
(Fed. Cir. 2018)],” USPTO Memorandum, Robert W. Bahr, Deputy
Commissioner For Patent Examination Policy, April 19, 2018 (the
“Berkheimer Memo”)).
The court in Berkheimer held that “[t]he patent eligibility inquiry may
contain underlying issues of fact.” Berkheimer, 881 F.3d at 1365 (quoting
Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016) (“The § 101 inquiry ‘may contain underlying factual
issues.”’)). But the court also held that “[w]hen there is no genuine issue of
material fact regarding whether the claim element or claimed combination is
well-understood, routine, [and] conventional to a skilled artisan in the
relevant field, this issue can be decided on summary judgment as a matter of
law.” Id. at 1368 (emphasis added). This qualification has been
subsequently reiterated.
If there is a genuine dispute of material fact, Rule 56 requires
that summary judgment be denied. In Berkheimer, there was
such a genuine dispute for claims 4–7, but not for claims 1–3
and 9 . . . . [I]n accordance with Alice, we have repeatedly
recognized the absence of a genuine dispute as to eligibility for
the many claims that have been defended as involving an
inventive concept based merely on the idea of using existing
computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.
Berkheimer v. HP Inc., 890 F.3d 1369, 1371–73 (Fed. Cir. 2018) (Order, On
Petition for rehearing en banc, May 31, 2018) (Moore, J., concurring); see
also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354,
1368 (Fed. Cir. 2018) (“A factual allegation or dispute should not
automatically take the determination out of the court’s hands; rather, there
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needs to be justification for why additional evidence must be considered—
the default being a legal determination.”).
Here, the Specification indisputably shows the recited (1) “electronic
communicably-coupled system distributed over a network”; (2) “computing
device” of said system; (3) “interfaces including] a plurality of interactive
fields that may be operated by [a] plurality of sellers to enter commands, in
which the interfaces include graphical user interfaces of sellers’ cellular
telephones”; and, (4) “graphical user interfaces of buyers’ devices”,
individually and in the ordered combination as claimed, were conventional
at the time of filing. See e.g., 10:21–23 (“GUI 116 contemplates any
graphical user interface, such as a generic web browser, that processes
information and efficiently presents the information to the user.”)
Accordingly, no genuine issue of material fact exists as to the well–
understood, routine, or conventional nature of the system used to implement
the financing scheme as claimed.
Appellant argues that “the claims clearly recite improvements to
technology of computerized and networked trading and interfaces. Among
other things, speed, interface efficiency, and data integrity are all
technological improvements addressed by the claims that are rooted in
computers and networking.” Appeal Br. 10. But, again, we have been
unable to find adequate supporting evidence. Such improvements could
indeed transform claimed subject matter that is otherwise directed to an
abstract idea into something significantly more. But the difficulty here is
that the record inadequately shows it.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
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that claim 1 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into an inventive application.
We have considered all of the Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 1, and claims 2–25, 27, and 28
which stand or fall with claim 1, are directed to an abstract idea and do not
present an “inventive concept,” we sustain the Examiner’s conclusion that
they are directed to patent-ineligible subject matter for being judicially-
excepted from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc., 656
Fed. Appx. 991, 997 (Fed. Cir. 2016) (“We have considered all of
LendingTree’s remaining arguments and have found them unpersuasive.
Accordingly, because the asserted claims of the patents in suit are directed to
an abstract idea and do not present an ‘inventive concept,’ we hold that they
are directed to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g.,
OIP Techs., 788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1098 (Fed. Cir. 2016).
The provisional rejection of claims 1–25, 27 and 28 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 56–68 of co-pending Application No. 12/408,370, now U.S.
7,774,258.
As we understand it, this rejection is still pending. It is not mentioned in the
Briefs or the Answer, but it is present in the Final Rejection and there is no
indication in the record before us that it has been withdrawn. Appellant does
not contest this rejection. Accordingly, the rejection is sustained.
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CONCLUSION
The decision of the Examiner to reject claims 1–25, 27, and 28 is
affirmed.
More specifically:
The rejection of claims 1–25, 27. and 28 under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter is affirmed.
The provisional rejection of claims 1–25, 27, and 28 on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 56–68 of co-pending Application No. 12/408,370, now U.S.
7,774,258 is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–25, 27, 28 101 Eligibility 1–25, 27, 28
1–25, 27, 28 Obviousness–type
double patenting
1–25, 27, 28
Overall
Outcome
1–25, 27, 28

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