Nafeh, John et al.

Patent Trials and Appeals Board

Feb 6, 2020

13185441 - (D) (P.T.A.B. Feb. 6, 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.
13/185,441 07/18/2011 John Nafeh PA5749US 2281
22830 7590 02/06/2020
CARR & FERRELL LLP
120 CONSTITUTION DRIVE
MENLO PARK, CA 94025
EXAMINER
MILEF, ELDA G
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
02/06/2020 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):
jsamson@carrferrell.com
patdocket@carrferrell.com
smather@carrferrell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte JOHN NAFEH and KENTON K. YEE
____________________

Appeal 2019-002442
Application 13/185,4411
Technology Center 3600
____________________

Before JOHN A. EVANS, JOHN P. PINKERTON, and
MICHAEL M. BARRY, Administrative Patent Judges.

PINKERTON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 3, 5–8, 12, 21, 22, and 24, which are all of the
claims pending in this application. Claims 1, 2, 4, 9–11, 13–20, and 23 are
canceled. 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. Appellant identifies the real party in interest as North
American Derivatives Exchange, Inc. (“Nadex, Inc.”). Appeal Br. 3.
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STATEMENT OF THE CASE
Introduction
Appellant generally describes the disclosed and claimed invention as
relating to “a method and apparatus for risk management and to a method
and apparatus for establishing and maintaining a market for initial and
secondary trading in risk management instruments.” Spec. ¶ 2.2
Independent claim 22 is illustrative of the subject matter on appeal
and reads as follows:
22. A redundant and load sharing system comprising:
two separate systems at a single location operating on a
same switched high speed local area network, each separate
system further comprising:
a means for establishing a contract trading system
electronically accessible by traders, the trading system including
a plurality of trading accounts having encrypted passwords, each
trader on the trading system being associated with at least one of
the plurality of trading accounts;
a means for establishing on the trading system, at least two
contracts designated contract “A” and contract “B”, where
contract “A” pays off a fixed nonzero monetary sum if a state
“s1” occurs on an expiration designated “T” and contract “B”
pays off the fixed nonzero monetary sum if a state “s2” occurs
on the expiration designated “T”, and where contract “A” pays
off a zero sum if the state “s2” occurs on the expiration
designated “T” and contract “B” pays off the zero sum if the state
“s1” occurs on the expiration designated “T”, and where state
“s1” and “s2” are each mutually exclusive of each other and

2 Our Decision refers to the Final Office Action mailed October 3, 2017
(“Final Act.”), Appellant’s Appeal Brief filed October 26, 2018 (“Appeal
Br.”) and Reply Brief filed February 1, 2019 (“Reply Br.”), the Examiner’s
Answer mailed Dec. 6, 2018 (“Ans.”), the original Specification filed July
18, 2011 (“Spec.”), and Provisional Patent Application No 60/284,051 filed
April 16, 2001 (“’051 Prov.”).
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together represent all possible outcomes at the expiration
designated “T”, and where the fixed nonzero monetary sum is
known when the at least two contracts bundle are established;
a means for selling over the trading system, at least one of
the contracts;
a means for settling the at least one of the contracts against
the trading account of the trader of the at least one of the
contracts; and
a means for assessing a transaction fee for at least one of
the steps of selling or settling of the at least one of the contracts.
Appeal Br. 19 (Claims App.).
Rejection on Appeal
Claims 3, 5–8, 12, 21, 22, and 24 stand rejected under 35 U.S.C. § 101
as being directed to a judicial exception without significantly more. Final
Act. 2–5.
ANALYSIS
A. Applicable Law
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“[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) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
[the] claim both individually and ‘as an ordered combination’ to determine
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whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an “inventive concept,” “an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office has issued guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Revised Guidance”).3 Under the Revised Guidance, to
decide whether a claim is directed to an abstract idea, we evaluate whether
the claim (1) recites one of the abstract ideas listed in the Revised Guidance
(“Prong One”) and (2) fails to integrate the recited abstract idea into a
practical application (“Prong Two”). See Revised Guidance, 84 Fed. Reg. at
51, 54. If the claim is directed to an abstract idea, as noted above, we then
determine whether the claim has an inventive concept. The Revised
Guidance explains that when making this determination, we should consider
whether the additional claim elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56.

3 See also USPTO, October 2019 Patent Eligibility Guidance Update (Oct.
17, 2019), https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf.
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With these principles in mind, we first analyze whether claim 22 is
directed to an abstract idea.
B. Abstract Idea
The Examiner determines that the recited steps of claim 22, excluding
the recited computing elements, are directed to the abstract idea of trading
and settling contracts. Non-Final Act. 2–3; see also Ans. 3 (determining
“[t]he claims are drawn to the concept of trading and settling of contracts”).
The Examiner also determines that claim 22 is similar to claims found by the
courts to be directed to abstract ideas in Bilski v. Kappos, 561 U.S. 593
(2010) and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014).
Final Act. 2–3; Ans. 3–4.
Appellant contends claim 22 is not directed to an abstract idea, but
instead to “new uses of a known machine.” Appeal Br. 6; see also Reply Br.
6–8. In particular, Appellant asserts claim 22 recites “a computer system in
the form of an electronic trading exchange” in which “several different
computers or processors are used in combination in a new way to improve
the technical operation of electronic trading exchanges.” Appeal Br. 6–7.
According to Appellant, claim 22 is similar to the patent–eligible claims in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014). Id. at 12; Reply Br. 9. Appellant explains that, like the claims in
DDR, “[t]he prevention of data loss and optimization of computing resources
by” claim 22’s “‘redundant and load sharing system comprising: two
separate systems at a single location operating on a same switched high
speed local area network[]’ is a ‘claimed solution[] necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.’” Appeal Br. 12 (citing DDR, 773 F.3d at
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1257). Appellant further contends that claim 22 is not directed to an abstract
idea because the Examiner improperly examined claim 22 “‘in part’ . . . ,
and not as a whole.” Id. at 6.
1. USPTO Step 2A, Prong One
Beginning with Prong One of the first step of Alice, we must
determine “whether the claims at issue are directed to one of those patent-
ineligible concepts,” including the abstract ideas enumerated in the Revised
Guidance. Alice, 573 U.S. at 217. One of the subject matter groupings
identified as an abstract idea in the Revised Guidance is “[c]ertain methods
of organizing human activity—fundamental economic principles or practices
(including . . . mitigating risk); commercial . . . interactions (including
agreements in the form of contracts; . . . sales activities or behaviors;
business relations); managing personal behavior or relationships or
interactions between people (including . . . following rules or instructions).”
See Revised Guidance, 84 Fed. Reg. at 52.
Here, apart from the recited systems “operating on a same switched
high speed local area network, each . . . system . . . comprising[] a means
for” performing each of the recited steps that establish and use a contract
trading system accessible “electronically” by traders, we determine claim 22
recites abstract ideas in the category of “methods of organizing human
activity.” Claim 22 recites the following steps (with paragraph letters and
tabbing added):
(a) “two separate systems at a single location,”
(b) “establishing a contract trading system . . . including
a plurality of trading accounts having encrypted passwords,
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each trader on the trading system being associated with at least
one of the plurality of trading accounts,”
(c) “establishing . . . at least two contracts designated
contract “A” and contract “B”, where contract “A” pays off a
fixed nonzero monetary sum if a state “s1” occurs on an
expiration designated “T” and contract “B” pays off the fixed
nonzero monetary sum if a state “s2” occurs on the expiration
designated “T”, and where contract “A” pays off a zero sum if
the state “s2” occurs on the expiration designated “T” and
contract “B” pays off the zero sum if the state “s1” occurs on
the expiration designated “T”, and where state “s1” and “s2”
are each mutually exclusive of each other and together
represent all possible outcomes at the expiration designated
“T”, and where the fixed nonzero monetary sum is known when
the at least two contracts bundle are established,”
(d) “selling . . . at least one of the contracts,”
(e) “settling the at least one of the contracts against the
trading account of the trader of the at least one of the
contracts,” and
(f) “assessing a transaction fee for at least one of the
steps of selling or settling of the at least one of the contracts.”
The functions performed in steps (a)–(f) of claim 22 are “methods of
organizing human activity.” In particular, step (a) recites “two separate
systems at a single location,” which is akin to the court-identified abstract
concept of “backing up data.” Intellectual Ventures I LLC v. Symantec
Corp., 725 F. App’x 976, 978 (Fed. Cir. 2018). “[C]ourts have frequently
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found that claims directed to copying and storing information for backup
purposes are directed to abstract ideas.” WhitServe LLC v. Dropbox Inc.,
2019 WL 3342949, at *4 (D. Del. July 25, 2019). Step (b) recites the
function of “establishing a contract trading system . . . including a plurality
of trading accounts,” which pertains to the long-standing, abstract concepts
of forming and managing contracts between parties. See Revised Guidance,
84 Fed. Reg. at 52 n.13 (citing buySAFE, 765 F.3d at 1355). That the
contract trading system uses encrypted passwords is of no moment because
“[e]ncryption . . . represents a basic building block of human ingenuity that
has been used for hundreds, if not thousands, of years.” Fid. Nat’l Info.
Servs., Inc., Petitioner, v. DataTreasury Corp., Patent Owner., No.
CBM2014-00021, 2015 WL 1967328, at *8 (PTAB Apr. 29, 2015). Step (c)
recites the functions of establishing two contracts on the trading system and
setting rules for determining how much each contract “pays off” based on a
condition precedent. This step pertains to commercial activities or behaviors
based on business rules, which courts have identified as a method of
organizing human activity and, thus, an abstract idea. See Revised
Guidance, 84 Fed. Reg. at 52 n.13.4 Although the rules recited in step (c)

4 See also KomBea Corp. v. Noguar L.C., 73 F. Supp. 3d 1348, 1352–53 (D.
Utah 2014), aff’d, 656 F. App’x 1022 (Fed. Cir. 2016) (affirming district
court ruling that claims directed to basic sales techniques executed with the
aid of a computer to create efficiencies were fundamental economic
practices, methods of organizing human activity, and, thus, abstract ideas);
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1317 (Fed.
Cir. 2016) (concluding that claims directed to keeping and applying business
rules defining actions to be taken regarding certain received information to
be a method of organizing human activity and, thus, an abstract idea); Parus,
677 F. App’x at 682 (affirming district court ruling that claims directed to
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may be specific, this is not enough to render claim 22 non-abstract, nor does
it change our overall understanding of the claim. See, e.g., Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (determining that even
though “some of the eleven [claim] steps were not previously employed in
this art,” that was “not enough—standing alone—to confer patent eligibility
upon the claims at issue.”).5 Steps (d)–(f) recite selling and settling one or
more of the contracts, including the assessment of a transaction fee. These
steps are abstract at least because they recite common, long-standing
practices in contract formation and management. See Revised Guidance, 84
Fed. Reg. at 52, 52 n.13 (citing buySAFE, 765 F.3d at 1355).
Based on the analysis above, we determine that claim 22 recites
abstract ideas in the “methods of organizing human activity” grouping. See
Revised Guidance, 84 Fed. Reg. at 52. Here, we note that merely combining
several abstract ideas does not render the combination any less abstract.
RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir.
2017) (“Adding one abstract idea . . . to another abstract idea . . . does not
render the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016) (determining the pending
claims were directed to a combination of abstract ideas).
Contrary to Appellant’s arguments, the Examiner did not improperly
examine claim 22 “in part.” Appeal Br. 6. Rather, the Examiner’s § 101
rejection makes clear that the Examiner considered each and every element
of claim 22, both individually and as an ordered combination. See Final Act.

organizing business functions based on rules provided by a user were a
method of organizing human activity, and thus, an abstract idea).
5 See also Netflix, Inc. v. Rovi Corp., 114 F. Supp. 3d 927, 942 (N.D. Cal.
2015), aff’d, 670 F. App’x 704 (Fed. Cir. 2016).
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2–4. More specifically, the first part of the Examiner’s § 101 analysis
identifies and considers each of the underlying steps for claim 22 as a basis
for describing and explaining the recited abstract ideas. See Final 2–3. For
example, the Examiner identifies the underlying steps of claim 22—i.e., the
two “establishing” steps, and the “selling,” “settling,” and “assessing”
steps—and explains that they describe the concept of trading and settling
contracts, similar to concepts identified as abstract ideas by the courts, such
as risk hedging in Bilski, and creating a contractual relationship in buySAFE.
See id. at 3; Ans. 3. The Examiner’s approach here is consistent with
USPTO guidance and case law precedent, which support reasonably
synthesizing the claim language when identifying a recited abstract idea.
See, e.g., Bilski, 561 U.S. at 611 (“Claims 1 and 4 in [P]etitioners’
application explain the basic concept of hedging, or protecting against
risk. . . . The concept of hedging, described in claim 1 and reduced to a
mathematical formula in claim 4, is an unpatentable abstract idea, just like
the algorithms at issue in Benson and Flook.”).6 Also consistent with
USPTO guidance and case law precedent, the second part of the Examiner’s
§ 101 analysis identifies the additional elements of claim 22 and considers
them both individually and as an ordered combination with the other
elements of the claim. See Final Act. 2–4. To be sure, the Examiner states
that

6 See also Smart Sys. Innovations v. Chicago Transit Auth., 873 F.3d 1364,
1371 n.8 (Fed. Cir. 2017) (concluding that the district court did not err in
determining that claims covered the abstract concept of paying for a subway
or bus ride with a credit card: “[t]he District Court here, as we have
instructed, looked to the language of the claims to discern the character of
the patent.”).

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[t]he claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception . . . when considered both individually and as an
ordered combination . . . . The claims recite the additional
limitations of a redundant and load sharing system comprising
two separate systems at a single location operating on a same
switched high speed local area network; each separate system
comprising a means for establishing a contract trading system
electronically accessible by traders, means for selling, means
for settling and assessing a transaction fee.
Id. at 3.
Appellant’s assertions that the claims are directed to “new uses of a
known machine” and are similar to the claims in DDR are also
unconvincing. As the Examiner explains, “the focus of the claims here is
not on such an improvement in computers as tools, but on certain
independently abstract ideas that use computers as tools.” Ans. 6, see also
id. at 7. The method claim in DDR addressed a technological problem
“particular to the internet.” DDR, 773 F.3d at 1257. Here, however, claim
22 addresses problems relating to contract structure and management and to
backing up information to guard against the event of a failure or loss. See,
e.g., ’051 Prov. at 1:22–3:14, 20:13–14, 38:22–39:9. Although the claim
uses computer and networking technology as a tool to address these
problems, the problems themselves are not “particular to” or “necessarily
rooted in” a certain technology, nor do their solutions require the use of such
technology.
Appellant asserts that the claims “improve the technical operation of
electronic trading exchanges,” by using multiple computers over a network
in combination “in a new way,” but Appellant does not identify any
persuasive evidence in the claims or Specification to support this assertion.
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Appeal Br. 7. It is true that the claimed invention’s use of a computer
networking system may achieve more accurate results in a shorter amount of
time, but “relying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible.” OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015).7
Appellant also asserts that “the claims are novel and non-obvious, but
somehow allegedly directed to an abstract idea.” This assertion is
unavailing because novelty and non-obviousness are of no relevance in
determining patentable subject matter. See Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (quoting Diehr, 450
U.S. at 188–89) (“‘novelty’ . . . is of no relevance in determining . . .
patentable subject matter”); Mayo, 566 U.S. at 91 (rejecting “the
Government's invitation to substitute §§ 102, 103, and 112 inquiries for the
better established inquiry under § 101”).
2. USPTO Step 2A, Prong Two
Because we determine that claim 22 recites an abstract idea, we turn
to Prong Two of the first step of the Alice analysis. See Revised Guidance,
84 Fed. Reg. at 51. In doing so, we consider whether there are any
additional elements beyond the recited abstract idea(s) that, individually or
in combination, “integrate the [abstract idea(s)] into a practical application,

7 See also Bancorp Servs, L.L.C. v. Sun Life Assur. Co. of Can., 687 F.3d
1266, 1278 (Fed. Cir. 2012) (“[T]he 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.”); Alice, 573 U.S. at 224
(concluding that “the use of a computer to create electronic records, track
multiple transactions, and issue simultaneous instructions” was not an
inventive concept).
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using one or more of the considerations laid out by the Supreme Court and
the Federal Circuit.”8 Id. at 54–55.
The Examiner identifies the additional elements of claim 22 as “a
redundant and load sharing system comprising two separate systems at a
single location operating on a same switched high speed local area network;
each separate system comprising a means for establishing a contract trading
system electronically accessible by traders, means for selling, [and] means
for settling and assessing a transaction fee.” Final Act. 3. Citing the
Specification’s disclosure of a computer network based futures trading
system or platform, the Examiner determines that the additional elements of
claim 22 “are recited at a high level of generality and are recited as
performing generic computer functions routinely used in computer
applications.” Id. (citing Spec. ¶¶ 31–36). The Examiner next determines
that “a contract system electronically accessible by traders is stated at a high
level of generality and its broadest reasonable interpretation comprises only
trading of contracts electronically through the use of some unspecified
generic computers and interface.” Id. at 4. The Examiner explains that
“[t]he use of generic computer components to transmit information through
an unspecified interface does not impose any meaningful limit on the
computer implementation of the abstract idea.” Id. The Examiner
additionally determines that “[t]here is no indication that the combination of

8 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of the Revised Guidance). Solely
for purposes of maintaining consistent treatment within the Office, we
evaluate it under Step 1 of Alice (Step 2A, Prong Two, of the Revised
Guidance). See Revised Guidance, 84 Fed. Reg. at 54–55.
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elements improves the function of a computer or improves any other
technology.” Id.
We agree with the Examiner that the additional elements of claim 22
recite no more than generic computing elements performing generic
computing functions. See, e.g., Spec. ¶¶ 32, 39, 237, 254, 269, 273, 277,
278, 280, Fig. 1; ’051 Prov. at 34–39. Thus, we determine that claim 22
does not integrate the judicial exception into a practical application, and thus
is directed to the judicial exception. See Revised Guidance, 84 Fed. Reg. at
55 (explaining that courts have identified “merely us[ing] a computer as a
tool to perform an abstract idea” as an example of when a judicial exception
may not have been integrated into a practical application). In particular, we
determine claim 22 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a)–(c), (e)–(h).
Appellant asserts that claim 22 recites features that go beyond, are
significantly more than, and amount to a meaningful application of the
alleged abstract idea. Appeal Br. 12–13; Reply Br. 9. According to
Appellant, “[c]laim 22 recites features that amount to more than a mere
recitation of the alleged abstract idea coupled with a generic instruction to
‘do it on a computer’ or ‘apply it.’ Appeal Br. 12.
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Appellant’s assertions are not persuasive because they are conclusory
and unsupported by the claim, the Specification, or other persuasive
evidence or technical reasoning. Appellant has failed to demonstrate that
claim 22 recites or requires any inventive programming, any specialized
computer hardware or other inventive computer components, i.e., a
particular machine, or that the claimed invention is performed using other
than generic computer components. It is true that the invention’s ability to
run on a general-purpose computer does not necessarily “doom[] the claims”
for purposes of subject matter eligibility. Appeal Br. 12 (citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)). But the fact
remains that claim 22 fails to recite an element, or combination thereof, that
amounts to “significantly more” than the recited abstract idea. Nor has
Appellant identified any disclosure in the Specification of any inventive
techniques or specialized computer components to perform the recited
functions of claim 22.
3. USPTO Step 2B – Inventive Concept
We now consider whether claim 22 has an inventive concept, that is,
whether any additional claim elements “‘transform the nature of the claim’
into a patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo,
566 U.S. at 78, 79). This requires us to evaluate whether the additional
claim elements add “a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field” or
“simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality.”
Revised Guidance, 84 Fed. Reg. at 56. “Whether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
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patent is a factual determination.” Berkheimer v. HP Inc., 881 F.3d 1360,
1369 (Fed. Cir. 2018).
Here, the Examiner determines the additional claim elements recite
“[g]eneric computer components . . . performing generic computer functions
that are well-understood, routine and conventional activities” and “amount
to no more than implementing the abstract idea with a computerized
system.” Final Act. 3–4. For supporting evidence, the Examiner cites U.S.
Patent No. 6,078,960 (filed July 3, 1998, “Ballard”), U.S. Patent No.
6,128,279 (filed Oct. 1, 1998, “O’Neil”), and U.S. Patent No. 6,185,601 B1
(filed Apr. 15, 1998, “Wolff”), and explains that these references “predate
the instant application showing that redundant and load sharing systems
comprising two separate systems in a single location on a same switched
high speed local area network was well-known routine and conventional.”
Ans. 5, 7. The Examiner further determines that “[l]ooking at the limitations
as an ordered combination adds nothing that is not already present when
looking at the elements taken individually. . . . Their collective functions
merely provide conventional computer implementation.” Id. at 4.
Appellant argues the Examiner failed to provide substantial evidence
under Berkheimer that the additional claim elements and their ordered
combination provide routine, well-understood, routine, and conventional
elements and functionality. Appeal Br. 8–14; Reply Br. 9.
Appellant’s argument does not persuade us that the Examiner erred.
First, we agree with the Examiner that the cited U.S. Patents provide
adequate evidence that claim 22’s “redundant and load sharing system
comprising[] two separate systems at a single location operating on a same
switched high speed local area network” was well-known, routine, and
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conventional.” See, e.g., Ballard, 1:13–29 (discussing hardware devices
balancing the load among redundant servers, such that all accessible data is
redundantly located on each server computer having the same physical
address); Wolff, Fig. 11A (item 1164), 55:40–2 (describing use of a
redundant array of disks (RAID) as being part of the prior art). Second, the
Examiner’s determination that the additional elements of claim 22 are well-
understood, routine, and conventional is amply supported by, and fully
consistent with, the Specification, which describes Appellant’s invention in a
manner that requires no more than a general-purpose computer with generic
computing elements. See, e.g., Spec. ¶¶ 32, 39, 237, 254, 269, 273, 277,
278, 280, Fig. 1; ’051 Prov. at 34–39. In addition, Appellant has not
established that the instant patent eligibility inquiry contains an
underlying issue of fact. It is true that 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) (“[T]he
§ 101 inquiry ‘may contain underlying factual issues.’”)). The court also
held, however, 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). Here, although Appellant asserts that certain
limitations have not been shown as well-understood, routine, and
conventional, Appellant does not explain specifically why these limitations
are not well-understood, routine, and conventional, nor does Appellant
identify any passages from the Specification that support its assertions.
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Thus, the record fails to show that any material, factual issues exist
regarding a claim element’s well-understood, routine, or conventional nature
in light of Berkheimer.
In view of the foregoing, considering claim 22 as a whole, we
determine that the additional claim elements do not provide “a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field.” Revised Guidance, 84 Fed. Reg.
at 56. Rather, these elements do no more than “simply append[]
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality.” Id. Accordingly, we agree
with the Examiner that claim 22 does not have an inventive concept.
4. Additional Arguments
For dependent claims 3, 5–8, 12, 21, and 24, Appellant additionally
argues the Examiner has not provided an explanation as to why each of these
claims as a whole is not patent-eligible. Appeal Br. 14–15. We do not
agree.
Contrary to Appellant’s argument, we determine the Examiner’s § 101
analysis adequately addresses each of dependent claims 3, 5–8, 12, 21, and
24 as a whole and explains why the additional elements of these claims do
not render them patent-eligible. Final Act. 4–5; see also Ans. 7–8.
Consistent with the Examiner’s determinations, the additional claim
elements merely provide further description of a state, future event,
catastrophic event, and election, and provide “a means for saving records for
compliance with a commodity exchange act (CEA).” Claims App. 17–20.
None of these elements—which merely provide further description of the
abstract ideas and a generic storage element—converts the otherwise
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ineligible concept of independent claim 22 into an inventive one. See
Revised Guidance, 84 Fed. Reg. at 55 nn.31–32 (identifying examples in
which a judicial exception has not been integrated into a practical
application, such as when an additional element adds insignificant extra-
solution activity to the judicial exception or does no more than generally link
the use of a judicial exception to a particular technological environment or
field of use). We also note for emphasis that § 101 case law is replete with
instances where the court designated and focused only on one or more
independent claims as representative of the entire claim set in conducting the
§ 101 analysis. See, e.g., Ultramercial, 772 F.3d at 712 (“As the other
claims of the patent are drawn to a similar process, they suffer from the same
infirmity as claim 1 and need not be considered further.”). This is especially
the case where, as here, Appellant does not make separate and particular
arguments beyond the independent claims. See, e.g., CyberFone Sys., LLC
v. Cellco P’ship, 885 F. Supp. 2d 710, 716 n.6 (D. Del. 2012), aff’d sub
nom. Cyberfone, 558 F. App’x 988 (Fed Cir. 2014) (“In its brief, plaintiff
focuses solely on how claim 1 is patent-eligible under § 101 . . . . No
argument is made with respect to claims 13 or 18 despite defendants raising
the ineligibility of those claims. Given plaintiffs focus, the court deals only
with claim 1.”).

5. Conclusion
Because we determine that claim 22 is directed to an abstract idea and
does not contain an inventive concept, we sustain the Examiner’s rejection
of claim 22 under 35 U.S.C. § 101. For the same reasons, as well as those
discussed above in response to Appellant’s additional arguments (Appeal Br.
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14–15), we sustain the Examiner’s rejection under § 101 of dependent
claims 3, 5–8, 12, 21, and 24.

CONCLUSION
We affirm the Examiner’s rejection of claims 3, 5–8, 12, 21, 22, and
24 under 35 U.S.C. § 101.
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R.
§ 41.50(f).

In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)
/Basis
Affirmed Reversed
3, 5–8,
12, 21,
22, 24
101 Eligibility 3, 5–8, 12,
21, 22, 24

Overall
Outcome
3, 5–8, 12,
21, 22, 24

AFFIRMED