NYSE Group, Inc.

Patent Trials and Appeals Board

Oct 14, 2021

2021001132 (P.T.A.B. Oct. 14, 2021)

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.
14/548,908 11/20/2014 Thomas F. Haller NGI-14-1073CON 5693
35811 7590 10/14/2021
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 5000
PHILADELPHIA, PA 19103
EXAMINER
KING JR., JOSEPH W
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
10/14/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
pto.phil@us.dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS F. HALLER
____________

Appeal 2021-001132
Application 14/548,908
Technology Center 3600
____________

Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.

BEAMER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–7 and 13–15. Claims 8–12 are withdrawn. We
have jurisdiction over the pending rejected claims 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 NYSE Group, Inc. as the real party in
interest. (Appeal Br. 1.)

Appeal 2021-001132
Application 14/548,908

2
THE INVENTION
This appeal is related to a prior appeal (2017-009923) of the same
application, decided November 26, 20178. Appellant failed to identify the
prior appeal as being related. See Appeal Br. 1. Appellant is reminded of
the duty to identify related “prior and pending appeals.” 37 C.F.R.
§ 41.37(c)(1)(ii).
Appellant’s disclosed and claimed invention is directed to a trading
platform adapted for pairs trading of unrelated securities from one or more
asset classes using a single order approach. (Abstr.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A computer-implemented method comprising:
in a computer system comprising a paring module, a
trading engine module, an order books module and at least one
database structure, said database structure defining a plurality
of order books and storing data defining predefined pairs of
unrelated securities as single orders in said plurality of order
books:
generating, by the pairing module, a list of predefined
pairs of unrelated securities, wherein for each predefined pair of
unrelated securities, the pairing module generates the
predefined pair of unrelated securities by:
receiving at least a first leg of a first security and a
second leg of the second security, wherein the first
security and the second security are unrelated securities
from different asset classes;
monitoring market-driven data;
determining, based on said monitoring, that at least
a threshold level of liquidity exists between the first leg
of the first security and the second leg of the second
security to accommodate the pairing;
Appeal 2021-001132
Application 14/548,908

3
in response to determining that the threshold level
of liquidity exists, determining, by further monitoring the
market-driven data, a relationship between the first leg of
the first security and the second leg of the second
security, the relationship comprising at least one of
criteria defining investor demand or trading patterns
between the unrelated securities; and
based on determining that the relationship exists,
creating a predefined pair of the unrelated securities;
presenting, by a display device of a remote computing
device, the list of predefined pairs of unrelated securities to a
user, the list comprising a subset of a plurality of securities in
one or more asset classes, each of the predefined pairs
comprising two securities that are determined to be tradeable on
the trading engine, have sufficient liquidity to accommodate the
pairing, and have the relationship based on one or more criteria;
receiving, via an input device of the remote computing
device, a selection of a predefined pair of unrelated securities
from the presented list;
receiving, by the pairing module, the selection of the
predefined pair of unrelated securities from the remote
computing device over the Internet;
creating, by the pairing module, a pairs trade order based
on said selection of the predefined pair by combining data
defining a first leg associated with a first security and data
defining a second leg associated with a second unrelated
security;
storing, by the order books module, said pairs trade order
as a single data entry into a corresponding order book, from
among the plurality of order books, associated with the
selection, the pairs trade order having order parameters, a
portion of the order parameters associated with the first leg,
another portion of the order parameters associated with the
second leg;
automatically searching said plurality of order books, by
the trading engine module, for both information corresponding
Appeal 2021-001132
Application 14/548,908

4
to the first leg and information corresponding to the second leg,
in other trade order data entries received from one or more
external systems to associate with the order parameters
retrieved from said corresponding order book; and
causing, by the trading engine module, a programmed
computer to execute, as a single electronic transaction involving
both the first and second legs, said pairs trade order when the
information corresponding to the first leg and the information
corresponding to the second leg is located in the other trade
order data entries and associated with order parameters of said
first and second legs.
(Appeal Br. 15–16 (Claims Index).)
REJECTION
The Examiner rejected claims 1–7 and 13–15 under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
(Final Act. 2–7.)
ISSUES ON APPEAL
Appellant’s arguments present the following issue:2
Whether the Examiner erred in finding the claims directed to non-
statutory subject matter. (Appeal Br. 9–27.)
ANALYSIS
In rejecting the claims pursuant to 35 U.S.C. § 101, the Examiner
determined the claims are patent ineligible because the claims are directed to
the abstract idea category of: “certain methods of organizing human
activity, which includes fundamental economic practices or principles (e.g.,

2 Rather than reiterate the arguments of Appellant and the positions of the
Examiner, we refer to the Appeal Brief (filed Aug. 21, 2020); the Reply
Brief (filed Dec. 3, 2020); the Final Office Action (mailed Mar. 26, 2020);
and the Examiner’s Answer (mailed Oct. 7, 2020) for the respective details.
Appeal 2021-001132
Application 14/548,908

5
securities trading — executing trade orders of various paired securities,
based on obtained securities leg data, market-driven data, liquidity threshold
data, and investor demand or trading pattern data).” (Final Act. 4–5.) The
Examiner further determined that the claims are not integrated into a
practical application, “since the recited features of the abstract idea are being
applied on a computer or computing device or via software programming
that is simply being used as a tool (“apply it”) to implement the abstract
idea.” (Id. at 5.) In addition, the Examiner determined that the claims did
not include additional elements that amount to something “significantly
more” than the recited abstract idea. (Id. at 6.)
Appellant argues that the Examiner “failed to identify which
element(s) specifically constitute an alleged abstract idea,” rather simply
restating the claim in full. (Appeal Br. 6.) Appellant argues that the claims
are not directed to an abstract idea, because the claims do not recite a
fundamental economic practice, but rather are directed to a “completely
unprecedented” concept of “executing two legs of unrelated securities as a
single transaction.” (Id. at 6–7.)
Appellant further argues that, even if it is determined that the claims
recite an abstract idea, the claims integrate the purported abstract idea into a
practical application. (Appeal Br. 7.) Appellant argues that the claims
include a “uniquely configured single database structure (i.e., defining a
plurality of order books) and a unique single handling process for processing
pairs trade orders of unrelated securities as single electronic transactions”
which operates “faster and more efficiently than conventional systems.”
(Id. at 8.) Appellant submits that the claimed invention “eliminates the
issues associated with having to align the timing and target parameters of
Appeal 2021-001132
Application 14/548,908

6
separately submitted orders discussed above, and further improves storage
efficiency, data retrieval times and order processing when compared to
conventional systems.” (Id. at 9.)
Finally, Appellant argues that the claims include additional elements
that amount to significantly more than any exception itself. (Appeal Br. 11.)
Appellant argues the claimed invention “improves the field of electronic
trading,” in that “[c]onventional systems do not include any mechanism for
processing or storing pairs trade orders of unrelated securities from different
asset classes as a single order data entry; nor any mechanism for executing
electronic transactions involving unrelated securities as a single transaction.”
(Id. at 11–12.)
We are not persuaded that the Examiner erred in rejecting the claims
pursuant to 35 U.S.C. § 101. An invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. Here, claims 1–6 and 13–15 relate to a “method,” and
claim 7 to a “system” — i.e., a process and a machine, respectively.
However, the Supreme Court has long held that “[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, 589–90 (2013)). The “abstract ideas”
category embodies the longstanding rule that an idea, by itself, is not
patentable. Alice, 573 U.S. at 216–17.
In Alice, the Supreme Court sets forth an analytical “framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts.” Id. at 217. The first step in the analysis is to “determine whether
Appeal 2021-001132
Application 14/548,908

7
the claims at issue are directed to one of those patent-ineligible concepts,”
such as an abstract idea. Id. Concepts determined to be abstract ideas, and
thus patent ineligible, include certain methods of organizing human activity
such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski v.
Kappos, 561 U.S. 593, 611 (2010)); mathematical concepts (Parker v.
Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v.
Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent-eligible
include physical and chemical processes, such as “molding rubber products”
(Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making
water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7
(quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
If the claims are directed to a patent-ineligible concept, the second
step in the Alice/Mayo analysis is 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.” 573 U.S. at 217 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). 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.” 573 U.S. at 217–18 (quoting Mayo, 566 U.S. at
72–73) (alteration in original). A claim that recites an abstract idea must
include additional features to ensure that the claim is more than a drafting
effort designed to monopolize the abstract idea. 573 U.S. at 221. A
Appeal 2021-001132
Application 14/548,908

8
transformation into a patent-eligible application requires more than simply
stating the abstract idea while adding the words “apply it.” Id.
Further to the Alice/Mayo analytical framework, and acknowledged
by Appellant, the USPTO published revised guidance on the application of §
101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) (hereinafter “Revised Guidance”). See also USPTO
October 2019 Update: Subject Matter Eligibility (Oct. 17, 2019)
(hereinafter “Update”), noticed at 84 Fed. Reg. 55942 (Oct. 18, 2019).
Under the Revised Guidance, the Office first looks to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see Manual of Patent Examining Procedure
(MPEP) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 10.2019, June
2020)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then look to whether
the claim:
(3) adds a specific limitation beyond the judicial exception that
are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or
Appeal 2021-001132
Application 14/548,908

9
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Revised Guidance.
In evaluating the claims at issue, we consider claim 1 as
representative, consistent with how Appellant and the Examiner analyze the
claims. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). As a preliminary matter,
although the Appellant did not refer to it, we previously affirmed the
Examiner’s Section 101 rejection of earlier versions of the claims in this
application. (Appeal 2017-009923.) Our analysis here is similar. As the
Examiner determined, all of the limitations of claim 1, omitting routine
computer elements such as “computer system,” functional “modules,
“database structure,” “computing device,” and “display device,” are properly
considered part of the recited abstract idea, which the Examiner summarized
as “executing trade orders of various paired securities, based on obtained
securities leg data, market-driven data, liquidity threshold data, and investor
demand or trading pattern data).” (Final Act. 3–5; Ans. 4–6.) We are not
persuaded that the Examiner erred in characterizing the abstract idea in this
manner. As the Examiner explained:
While the claimed subject matter perhaps gives rise to an
improved abstract idea, it is an abstract idea nonetheless, being
that of a fundamental economic practice/principal of securities
trading, be they paired or unpaired securities being traded. The
CAFC has held that “a claim for a new [novel] abstract idea is
still an abstract idea.” (See e.g., SAP America, Inc. v lnvestpic,
LLC (Fed. Cir. 2018) slip opinion at 2-3, citing Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed.
Cir. 2016).
Appeal 2021-001132
Application 14/548,908

10
(Ans. 6.)
Further pursuant to the Revised Guidance, we consider whether there
are additional elements set forth in claim 1 that integrate the judicial
exception into a practical application. Revised Guidance, 84 Fed. Reg. at
54–55. Here, the abstract idea of claim 1 takes up the entirety of the claim.
Integration into a practical application requires an additional element or
combination of additional elements in the claim to apply. We agree with the
Examiner that the claims at most solve financial problems, but do not
constitute an improvement in technology. (Ans. 7.) We also agree that any
“additional elements” included in the claims are at most insignificant extra-
solution activity. (Id. at 8.) As the Examiner determined:
[T]hese elements are simply carrying out the abstract idea via
functions that are well-known, routine and/or convention for
computers, computing devices, and associated displays for
displaying data and/or receiving inputted data. (See e.g.,
applicant's Specification ¶¶ 009, 012-014, 016-019)
(Id.)
Nor does the subject matter of claim 1 contain additional elements
that implement the judicial exception with a “particular machine,” because
the claims do not specify any details in regard to the system. See MPEP
§ 2106.05(b). Further, the method does not transform matter; at best it
transforms information. See MPEP § 2106.05(c). Also, claim 1 does not
have any other meaningful limitations (MPEP § 2106.05(e)), or any of the
other considerations set forth in the Revised Guidance regarding a
determination of whether additional elements integrate the judicial exception
into a practical application. See Revised Guidance, 84 Fed. Reg. at 55.
Appeal 2021-001132
Application 14/548,908

11
Accordingly, we conclude that the subject matter of claim 1 (and the
remaining claims) is directed to a fundamental economic practice, and thus
an abstract idea, and the abstract idea is not integrated into a practical
application.
Turning to the second step of the Alice inquiry, we 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.” 573 U.S. at 217 (quoting
Mayo, 566 U.S. at 66, 79, 78). As discussed above, there are no additional
elements to the subject claims that could add “significantly more” to the
basic abstract idea encompassed by the claim sufficient to transform the
claimed abstract idea into a patent-eligible application. We agree with the
Examiner that:
The additional elements, such as: a “computer system”, various
“modules” to accomplish recited respective functionality
(which may be hardware or software or a combination of both
— See e.g., Spec. ¶ 022), the “Internet”, an “order book” to
store paired orders, at least one “database structure”, a “remote
computing/computer device”, a “display device of a remote
computing device”, and a “computer device” having a
“processing component” and a “memory component”, do not
amount to an innovative concept since . . . the claims are simply
using the additional elements as a tool to carry out the abstract
idea (i.e., “apply it”) on a computer or computing device and/or
via software programming.
(Ans. 9.)
In sum, nothing regarding any aspect of the “ordered combination” of
the claim elements provides significantly more than the abstract idea that
claim 1 is directed to.
Appeal 2021-001132
Application 14/548,908

12
Accordingly, we agree with the Examiner that claims 1–7 and 13–15
are patent ineligible.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–7, 13–15 101 Eligibility 1–7, 13–15

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)(1)(iv).

AFFIRMED