NYSE MKT LLC

Patent Trials and Appeals Board

Jun 21, 2021

2021000850 (P.T.A.B. Jun. 21, 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.
14/542,701 11/17/2014 Clifford J. Weber MKT-14-1074CON 1944
35811 7590 06/21/2021
IP GROUP OF DLA PIPER LLP (US)
ONE LIBERTY PLACE
1650 MARKET ST, SUITE 5000
PHILADELPHIA, PA 19103
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
06/21/2021 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 CLIFFORD J. WEBER and LYNN C. MARTIN1
_____________

Appeal 2021-000850
Application 14/542,701
Technology Center 3600
______________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and
MICHAEL T. CYGAN, Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1 through 30.
We AFFIRM.

INVENTION
The invention is a system to facilitate trades priced relative to a
reference benchmark value associated with an underlying index future.
Specification, paragraph 5. Claim 1 is illustrative of the invention and is
reproduced below:

1 According to Appellant, NYSE AMERICAN LLC is the real party in
interest. App. Br. 1.
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1. A system for automatically pricing trades based on
benchmark values associated with multiple time zones,
comprising:
a processor;
a communication device operatively coupled to the
processor, the communication device configured to receive an
indication of a trade to be priced relative to a reference
benchmark value associated with multiple time zones when the
trade is initiated in a first time zone, the indication including
information associated with the trade and the trade having a
basis that is determined at least one day prior to a determination
of a final price and a quantity of the trade;
the communication device further configured to receive
components of the reference benchmark value from at least one
external data source via an electronic network, each of the
components received at a specific time point associated with a
respective one of the multiple time zones, the specific time
point differing from a closing time of the first time zone; and
a database operatively coupled to the processor, the
database configured to store the information associated with the
trade and a linked trade identifier in an index structured data
table until a last of the components is received at a final specific
time point, thereby delaying execution of the trade;
upon determining the last of the components is received,
the processor further configured to automatically:
determine the reference benchmark value based on
all of the received components,
determine the final price and the quantity for the
trade based on the reference benchmark value,
assign the final price and the quantity for the trade
to at least a portion of the information associated with the
trade,
generate an executable trade, and
report the executable trade to a reporting platform.

Appeal Br. 21 (Claims App.).

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REJECTIONS AT ISSUE
The Examiner rejected claims 1 through 30 under 35 U.S.C. § 101 for
being directed to patent-ineligible subject matter. Final Act. 6–7.2
The Examiner rejected claims 1 through 30 on the ground of non-
statutory, obviousness-type, double patenting, for being unpatentable over
claims 1 through 27 of U.S. Patent 10,430,879. Final Act. 4–6.

PRINCIPLES OF LAW
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.3 The USPTO
current eligibility guidance is found in the Ninth Edition, Revision 10.2019
(revised June 2020) of the Manual of Patent Examination Procedure
(MPEP), and particularly within Sections 2103 through 2106.07(c).
“Because the MPEP now incorporates the 2019 Revised Patent Subject
Matter Eligibility Guidance (2019 PEG), October 2019 Patent Eligibility

2 Throughout this Opinion, we refer to the Appeal Brief, filed June 15, 2020
(“App. Br.”), the Reply Brief, filed November 16, 2020 (“Reply Br.”), the
Examiner’s Answer, mailed September 17, 2020 (“Answer”), and the Final
Office Action, mailed March 26, 2020 (“Final Act.”).
3 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public
comments, the Office issued further guidance on October 17, 2019,
clarifying the 2019 Revised Guidance. USPTO, October 2019 Update:
Subject Matter Eligibility (the “October 2019 Update”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at
1.
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Guidance Update (October 2019 Update), and the Berkheimer Memo,4 all
references to those materials should now be directed to the MPEP.” See
https://www.uspto.gov/patent/laws-and-regulations/examination-
policy/subject-matter-eligibility (emphasis added). All references to the
MPEP throughout this Decision are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
Under MPEP § 2106, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (“Step 2A, Prong Two”).5

Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

4 Referring to Berkheimer v. HP, Inc., 881 F.3d. 1360, 1369 (Fed. Cir.
2018).

5 “Examiners evaluate integration into a practical application by (a)
identifying whether there are any additional elements recited in the claim
beyond the judicial exception, and (b) evaluating those additional elements
individually and in combination to determine whether the claim as a whole
integrates the exception into a practical application.” MPEP § 2106.04(d)II.
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(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 MPEP § 2106.05(d)).

ANALYSIS

Patent eligibility under § 101 is a question of law that may contain
underlying issues of fact. “We review the [Examiner’s] ultimate conclusion
on patent eligibility de novo.” Interval Licensing LLC v. AOL, Inc., 896
F.3d 1335, 1342 (Fed. Cir. 2018) (citing Berkheimer v. HP Inc., 881 F.3d
1360, 1365 (Fed. Cir. 2018)); see also SiRF Tech., Inc. v. Int’l Trade
Comm’n, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (“Whether a claim is drawn
to patent-eligible subject matter is an issue of law that we review de novo.”).
We have reviewed Appellant’s arguments in the Briefs, the Examiner’s
rejection, and the Examiner’s response to Appellant’s arguments. We
concur with the Examiner’s findings and conclusions in the Final Rejection
and the Answer. Appellant’s arguments have not persuaded us of error in
the Examiner’s rejection of all the claims under 35 U.S.C. § 101 and we
address them as they apply to the 2019 Revised Guidance.

Abstract Idea
The Examiner finds that the claims are not patent eligible as they are
directed to a judicial exception without reciting significantly more. Final
Act. 6–7. Specifically, the Examiner finds that the claims are directed to “to
the abstract idea of trades that are priced to a reference benchmark value
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without significantly more,” which the Examiner finds is a method of
organizing human activity. Id.
Appellant argues the Examiner’s rejection is in error as the Examiner
impermissibly overgeneralized the claimed invention and did not consider
the specific and detailed limitations. Appeal Br. 8–11. Appellant argues
that:
Appellant's invention is not directed to any fundamental
economic principal or practice, but is instead directed to a
novel, system improving computer system having a specific
hardware configuration and method to delay determination of a
reference benchmark value and delay creation of executable
trades until such time as reference benchmark value
components come into existence across multiple time zones and
are accordingly received.

Appeal Br. 9. Further, Appellant argues that the limitations directed to: a) a
trade indicator being received in a first time zone; b) the benchmark
components being retrieved from external data sources in multiple time
zones; c) delaying execution of the trade; and d) automatically executing the
trade when the last benchmark component is receive, are “are all computer-
specific features that cannot possibly be deemed as a human activity.”
Appeal Br. 10. Additionally, Appellant argues that these limitations can be
performed in the human mind. Appeal Br. 11 (citing SiRF Tech., Inc. v. Int’l
Trade Comm’n,).
We concur with the Examiner that the claims recite an abstract
concept of organizing human activity as they recite a fundamental economic
process of pricing trades and executing the trades. Specifically
representative claim 1 in the preamble recites a system for “pricing trades
based upon a benchmark values associated with multiple time zones.” Claim
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1 further recites receiving an indication of a trade to be priced relative to a
benchmark value, receiving components of the benchmarked value from
external sources at different times (receiving data concerning pricing) and
upon determining that all the comments (all data) are received: determining
the benchmark’s value, determining the price for the trade, executing the
trade and reporting the trade. Thus, the claim recites a business process of
receiving an order, valuing the order, placing a trade and posting the orders
in a trading account, which is a fundamental economic activity. This is
similar to other “fundamental economic concepts” found to be abstract ideas
by the Supreme Court and this court. See, e.g., Alice, 573 U.S. at 220
(intermediated settlement); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (risk
hedging); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (using advertising as an exchange or currency); Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (data collection); Accenture Glob. Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1346 (Fed. Cir. 2013) (generating
tasks in an insurance organization).
The claim 1 steps of receiving an indication of a trade, receiving
components of the benchmarked value from external sources at different
times (receiving data concerning pricing) and upon determining that all the
comments (all data) are received, determining the benchmarks value, price
for the trade; are all steps of obtaining information for valuation of a trade.
While these steps are part of a fundamental economic process, they also
recite a concept of gathering data, analyzing it, and displaying the data,
which is similar to the idea held to be abstract in in Electric Power Group.
The claims at issue in Electric Power Group recited several steps of
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receiving data from various sources, detecting and analyzing the data, and
displaying the data. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1351–52 (Fed. Cir. 2016). The court stated “we have treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas.”
Id. at 1353; see also Classen Immunotherapies, Inc. v. Biogen IDEC, 659
F.3d 1057, 1067 (Fed. Cir. 2011) (finding claims to collecting and
comparing known information determined to be steps that can be practically
performed in the human mind); In re TLI Communications 823 F3d 607, 613
(Fed. Cir. 2016) (finding the claims to classifying and storing digital images
as reciting an abstract idea) Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“The
concept of data collection, recognition, and storage is undisputedly well-
known. Indeed, humans have always performed these functions.”); October
2019 Update: Subject Matter Eligibility 7 (discussing Electric Power Group
and mental processes), available at https://www.uspto.gov/sites/default/
files/documents/ peg_oct_2019_update.pdf.
Further, Appellant’s argument that such steps could not be performed
in the mind is not persuasive of error. Appeal Br. 11. The claim is not
limited to an amount of data or a computation beyond what a person could
perform in their mind. For example, because the claim is broad enough to
receive a trade for a something with a benchmark value based upon
components from two time zones, it would be easy for a person to accept the
trade request and wait (delay the trade) until the pricing data from the
components in those time zone become available and perform the pricing.
Further, our reviewing court has said “[A] purportedly new arrangement of
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generic information that assists [users] in processing information more
quickly” does not confer patent-eligibility. Trading Techs. Int’l, Inc. v. IBG
LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019), cert. denied, 140 S. Ct. 954
(2020).
We do not consider the recitation of a delay in execution of a trade
does not make the concept less abstract, and is addressed further with respect
to Appellant’s “practical application” argument.
Thus, we consider representative claim 1 to recite elements of two
abstract ideas: a mental process and a certain method of organizing human
activity, such as a fundamental economic practice. Merely combining
several abstract ideas does not render the combination any less abstract.
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017)
(“Adding one abstract idea (math) to another abstract idea . . . does not
render the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining the
pending claims were directed to a combination of abstract ideas). Thus, we
conclude representative claim 1 recites an abstract idea.

Practical Application
The Examiner finds that the claims do not include additional elements
that are sufficient to amount to significantly more than the judicial
exception, as the additional elements of the claim, a processor,
communication device, a database and memory; are components of a general
purpose computer performing the steps of the claims. Final Act 6–7 (citing
page 26 of Appellant’s Specification). The Examiner finds the claimed
invention to provide “no specific improvement to the way computers
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operate.” Ans. 8. The Examiner further disagreed with appellants and finds
that the claims are not focused on a specific way of improving a computer or
another relevant technology. Ans. 4–5.
Appellant argues that the claims integrate the abstract idea into a
practical application. Appeal Br. 11–15; Reply Br. 4–7. Appellant argues
that the claims “recite limitations that define a timing mechanism that holds
trade data and delays for a period of time the creating of an executable trade
that would otherwise automatically be executed” which draw the claim to a
practical application. Appeal Br. 12 (citing Ex parte Smith (Appeal 2018-
000064, decided February 1, 2019 and designated as informative on March
19, 2019). Appellant argues that in In Re Smith:
the Board concluded that under the 2019 PEG, Claim 1
amounts to a practical application of the judicial exception
because the claim includes additional elements that “limit the
conventional practice of automatically executing matching
market orders by reciting a specific timing mechanism in which
the execution of a matching order is delayed for a specific
period of time. This delay allows for other matching orders to
be received from the in-market participants so that the order can
be allocated between the first and second and executed upon
expiration of the delay period”
Appeal Br. 12–13 (citing Ex parte Smith, p. 9). Appellant asserts that the
claims at issue include a similar timing mechanism that delays automatic
execution of trades and thus is a practical application of the abstract idea.
Appeal Br. 14–15. Further, Appellant asserts the claims are an improvement
to the prior systems as “participants have a better idea of the final price”
which the claims address by delaying the execution of the trade until all
components of the benchmark are received. Appeal Br. 14–15.

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We concur with the Examiner that the claims do not recite a practical
application of the abstract concept and are not persuaded of error by
Appellant’s arguments. We disagree with Appellant that the claims at issue
are similar to our recent informative decision Ex Parte Smith.6 In Ex parte
Smith the panel found that the representative claim “recites additional
limitations which focus on addressing problems arising in the context of a
hybrid derivatives trading system in which trades are made both
electronically and on a trading floor (i.e., ‘in the pits’).” Ex Parte Smith p. 8.
Further, the panel stated:
The use of the recited “timer” does not occur with each and
every trade. Rather, it is implemented in specific circumstances
in a specific trading environment, namely when a matching
market order is received from an in-crowd market participant in
a hybrid trading system. As the Specification explains, the
problem of inequitable access to information arises only in the
context of hybrid trading platforms where trades occur both “in
the pits” and electronically. Spec. ¶ 55. Thus, like the claim and
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014), Appellants’ claims “overcome a problem
specifically arising in the realm of computer networks.” Id. at
1257.
Ex Parte Smith p 9–10.
Here the claims and facts are very different from those at issue in Ex

6 Appellant references Ex parte Smith (Appeal No. 2018-000064 issued
March 19, 2019) as supporting the assertion that the Examiner's rejection be
reversed Appeal Br. 11–15; Reply Br. 5–7. Appellant appears to rely on this
decision for the general proposition that claims that are limited to a practical
application and provide a technological improvement over the art are patent-
eligible, a proposition with which we do not necessarily disagree. However,
as explained infra, we are of the view that the instant claims are different
from those at issue in Ex parte Smith and do not sufficiently meet these
requirements.
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Parte Smith. Representative claim 1 recites a database to store information
until the last of the components is received, thereby delaying execution of
the trade. Appellant’s Specification does not identify that this delay is
related to solving a problem arising from the use of the computer. Rather,
Appellant’s Specification identifies that the use of an index (claimed
benchmark) which is based upon stocks (components of the index) sold in
markets in various time zones requires a delay to obtain accurate pricing.
(Specification ¶¶ 2–4, 7 and 25). Thus, the delay is not to overcome a
problem specifically arising due to the user of computer, as in Ex Parte
Smith, or DDR Holdings, LLC v. Hotels.com, L.P).
Instead, the delay is to more accurately price the trade (i.e. the delay is
solving a problem that exists regardless of whether a computer is used) and
the use of a computer is just automating an abstract concept. As such, we
consider representative claim 1 to be reciting the use of a computer system
and user interface to implement the abstract idea, of pricing a trade with a
benchmark based upon components from different time zones, which is
insufficient to transform the abstract concept to patent eligible subject
matter. FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed.
Cir. 2016) (“[T]he use of generic computer elements like a microprocessor
or user interface do not alone transform an otherwise abstract idea into
patent-eligible subject matter.”) (Citing DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)). Accordingly, Appellant has not
persuaded us the Examiner erred in not considering representative claim 1 to
be reciting an improvement in the operation of the computer or another
technology.
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Thus, Appellant’s arguments have not persuaded us the Examiner
erred in not finding the claims recite a practical application of the abstract
idea.

Significantly more than Abstract Idea
If a claim: (1) recites a judicial exception, and (2) does not integrate
that exception into a practical application, we then look to whether the claim
adds a specific limitation beyond the judicial exception that is not “well-
understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or,
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception.
Appellant restates the claim and asserts that “all of these features,
including those highlighted in bold above, certainly go well beyond any
abstract idea, particularly when considered as a whole. Further, the
collection of claimed elements cannot possibly be construed as well-
understood, routine, and conventional in this art.” Appeal Br. 16.
These arguments have not persuaded us of the claim recites
limitations in addition to the abstract concept that are more than well-
understood, routine, and conventional activities. As discussed supra, the
Examiner has found that the claims recite the additional limitations of: a
processor, communication device, a database and memory; which are
components of a general purpose computer (a well known device)
performing the steps of the claims. Final Act 6–7 (citing page 26 of
Appellant’s Specification). We have reviewed Appellant’s Specification,
and concur that Appellant’s specification recites using well-known
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computers, processors, databases and communication systems to perform the
fundamental economic activity of receiving an order, valuing the order,
placing a trade and posting the orders in a trading account. See ¶¶ 26–29.
Thus, Appellant’s arguments have not persuaded us the Examiner erred in
concluding representative claim 1 does not recite additional elements beyond
those that are well understood, routine, and conventional.

In summary, Appellant’s arguments have not persuaded us of error in
the Examiner’s determination that the claims recite an abstract idea, or
receiving an order, valuing the order, placing a trade and posting the orders
in a trading account. Further, Appellant’s arguments have not persuaded us
that the Examiner erred in finding that the claims are not integrated into a
practical application of that abstract idea, because the claims are not:
directed to an improvement in the functioning of the computer or to other
technology or other technical field; directed to a particular machine; directed
to performing or affecting a transformation of an article to a different state or
thing; directed to using a judicial exception in some meaningful way beyond
linking the exception to a particular technological environment such that the
claim as a whole is more than a drafting effort to monopolize the judicial
exception. Nor have Appellant’s arguments persuaded us the Examiner
erred in finding the additional limitations of the claims simply append well-
understood and conventional activities such that the claim as a whole does
not amount to significantly more than the abstract idea itself. Accordingly,
we sustain the Examiner’s rejection of claims 1 through 30 under 35 U.S.C.
§ 101 as being directed to patent ineligible subject matter.

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Double Patenting Rejection
Appellant argues on pages 19 and 20 of the Appeal Brief that the
Examiner’s double patenting rejection should be held in abeyance pending
resolution of the other rejections. As such, Appellant has not identified an
error in the Examiner’s double patenting rejection and there are no issues for
us to decide with respect to this rejection, thus, we sustain it pro forma.
DECISION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–30 Double Patenting,
Bares
1–30
1–30 101 Eligibility 1–30
Overall
Outcome
1–30

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