Richard Himmelstein

Patent Trials and Appeals Board

Dec 31, 2020

2020004559 (P.T.A.B. Dec. 31, 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.
11/944,042 11/21/2007 Richard Himmelstein 69174-6 4582
13010 7590 12/31/2020
The Law Office of Patrick F. O''Reilly III, LLC
1509 Lafayette Drive
Columbus, OH 43220-3869
EXAMINER
KANG, IRENE S
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
12/31/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD HIMMELSTEIN
____________

Appeal 2020-0045591
Application 11/944,042
Technology Center 3600
____________

Before BRADLEY B. BAYAT, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL
Richard Himmelstein (Appellant)2 appeals pursuant to 35 U.S.C.
§ 134(a) from the decision rejecting claims 37–41, 43, and 44, which
constitute all pending claims before us for review.3 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 Our Decision references Appellant’s Appeal Brief (“Appeal Br.,” filed
Nov. 27, 2019), the Examiner’s Answer (“Ans.,” mailed Mar. 18, 2020), and
Final Office Action (“Final Act.,” mailed June 26, 2019).
2 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, the real party in interest is
“BarterSecurities, Inc.” Appeal Br. 3.
3 Claims 1–36 and 42 are canceled, and claims 45–54 are withdrawn.
Appeal Br. 11–12, Claims App.
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STATEMENT OF THE CASE
Claimed Subject Matter
Appellant’s “invention relates to a computer-based website for
bartering, exchanging or selling, (hereinafter referred to as bartering), items
or securities.” Spec. 1. Claim 37, reproduced below with added bracketed
matter and emphases, is the sole independent claim on appeal.
37. A computerized transferable stock option trading system for
facilitating buying and selling employee stock options, the system
comprising:
a processor; and
a memory connected to the processor and storing instructions to
control the operation of the processor;
the stored instructions operative to direct the processor to:
[(a)] identify a first trader and a second trader, the first trader
seeking to acquire option rights for a stock, the second trader being an
employee controlling option rights for the stock;
[(b)] receive an offer from the first trader, the offer identifying
the stock for which the first trader seeks to acquire option rights and a price
associated with the option rights;
[(c)] receive an order from the second trader, the order
identifying the stock for which the employee controls option rights, a
quantity of options to sell, and a range above and below a market price of
the stock;
[(d)] determine the market price of the stock and determine
whether the market price of the stock is within the range above and below
the market price of the stock, thereby assisting the second trader in
determining whether the offer is financially advantageous;
[(e)] display in a dynamic display area, the order from the
second trader;
[(f)] display in a static display area aligned with the dynamic
display area the offer from the first trader;
[(g)] match the order with the offer;
[(h)] transfer the option rights for the stock from the second
trader to the first trader; and
[(i)] transfer funds in accordance with the offer from the first
trader to the second trader.
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Rejections
I. Claims 37–41, 43, and 44 stand rejected under 35 U.S.C. § 101 as
being directed to an abstract idea without significantly more.
II. Claims 37–41, 43, and 44 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
III. Claims 37–41, 43, and 44 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Gutterman et al. (U.S. 5,297,031, iss. Mar.
22, 1994) (“Gutterman”), Popolo (U.S. 5,715,402, iss. Feb. 3,
1998), to Cristofich et al. (U.S. 6,173,270 B1, iss. Jan. 9, 2001)
(“Cristofich”), Barron’s Dictionary of Finance and Investment
Terms (Fifth Edition, 1998) (“Barron’s”), AAPA, and Schmerken,
I., “How Computer Assisted Trading is Making the Toronto Stock
Exchange Purr,” Wall Street Computer Review ((pub. Dec. 1987),
pp. 71–78, 97) (“Schmerken”).
OPINION
Rejection I
35 U.S.C. § 101
Under 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. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[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).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
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Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 78, 79). This 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.’” Id. at 217–18 (alteration in original) (citation
omitted).
In rejecting claims 37–41, 43, and 44 as directed to an abstract idea
without significantly more, the Examiner evaluated the claims together
under the Alice framework and the 2019 Revised Guidance.4 Final Act. 4–7.

4 The U.S. Patent and Trademark Office (“USPTO”) published revised
guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) “clarifying that a claim is not ‘directed to’ a judicial exception
if the judicial exception is integrated into a practical application of that
exception.” Id. at 50.

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Appellant argues all claims as a group. Appeal Br. 5–6. We select claim 37
as representative of the group, with claims 38–41, 43, and 44 standing or
falling therewith. 37 C.F.R. § 41.37(c)(1)(iv)(2019).
Statutory Categories under § 101
To determine subject matter eligibility under 35 U.S.C. § 101, the
Examiner first determines if the claims fall into one of the four statutory
categories of invention: processes, machines, manufactures, or composition
of matter. See MPEP § 2106.03. The Examiner determines that claim 37 is
directed to a system or machine, which is one of the statutory categories
under § 101. Final Act. 4.
We now turn to the two step Alice framework.
Step One of the Alice Framework (2019 Revised Guidance, Step 2A)
Step 2A, Prong One
The first step in the Alice framework is to determine whether the
claims at issue are “directed to” a patent-ineligible concept, e.g., an abstract
idea. Alice Corp., 573 U.S. at 217. This first step, as set forth in the 2019
Revised Guidance (i.e., Step 2A), involves a two-prong test; in Step 2A,
Prong One, the Examiner looks to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54.
To that end, the Examiner determines that under the broadest
reasonable interpretation, limitations (a)–(d) and (g)–(i) of claim 37 (not
italicized) as a whole describe the performance of financial trading between
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parties by facilitating buying and selling stock options, which is method of
organizing human activity. Final Act. 5. According to the Examiner:
Financial trading is a fundamental economic practice long
prevalent in commerce systems. If a claim limitation, under its
broadest reasonable interpretation, covers a fundamental
economic principle or practice but for the general linking to a
technological environment, then it falls within the organizing
human activity grouping of abstract ideas. Accordingly, the
claim recites an abstract idea.
Id.
Consistent with prior decisions by our reviewing courts, we agree
with the Examiner that limitations (a)–(d) and (g)–(i) of claim 37 recite a
fundamental economic practice, which is one of the certain methods of
organizing human activity enumerated under the 2019 Revised Guidance.
84 Fed. Reg. at 52. The abstract idea recited here is not meaningfully
different from the ideas found to be abstract in other cases. Notably, the
Federal Circuit held that claims to a new method of allocating returns to
different investors in an investment fund is a fundamental economic concept
and an abstract idea. In re Greenstein, 774 F. App’x 661, 664 (Fed. Cir.
2019) (non-precedential). See also, e.g., Alice Corp., 573 U.S. at 219–20
(describing the abstract concept of intermediated settlement as a
“‘fundamental economic practice long prevalent in our system of
commerce’” and also as “a building block of the modern economy”)
(citation omitted); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (claims to the
abstract idea of hedging are a “fundamental economic practice long
prevalent in our system of commerce and taught in any introductory finance
class”) (citation omitted); In re Chorna, 656 F. App’x 1016, 1021 (Fed. Cir.
2016) (non-precedential) (describing the abstract idea of a financial
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instrument to reduce the risk of investing as a fundamental economic
principle).
Appellant does not contest the Examiner’s evaluation of the abstract
idea under Step 2A, Prong One.5 Instead, Appellant contends that claim 37
is integrated into a practical application under Step 2A, Prong Two. See
Appeal Br. 5–6.
Accordingly, it is undisputed that claim 37 recites an abstract idea.
Step 2A, Prong Two
Having concluded that claim 37 recites a judicial exception, i.e. an
abstract idea (Step 2A, Prong One), the Examiner next considers whether the
claim recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two). 2019 Revised Guidance, 84
Fed. Reg. at 51. When a claim recites a judicial exception and fails to
integrate the exception into a practical application, the claim is “directed to”
the judicial exception. Id. A claim may integrate the judicial exception
when, for example, it reflects an improvement to technology or a technical
field. Id. at 55.
The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d

5 Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (“If an
appellant fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a general matter,
unilaterally review those uncontested aspects of the rejection.”).
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1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36.
Under Step 2A, Prong Two, the Examiner determines that
the judicial exception is not integrated into a practical
application. The claim limitations are not indicative of
integration into a practical application by claiming an
improvement to the functioning of the computer or to any other
technology or technical field. Further, the claim limitations are
not indicative of integration into a practical application by
applying or using the judicial exception in some other
meaningful way. In particular the claim limits of identify trader,
receiving offer, receiving order, determine price, display order,
display offer, match the order with the offer, transfer rights, and
transfer funds, are claimed and described at a high level of
generality and are functions any general purpose computer
performs such that it amount no more than mere instruction to
apply the exception to a particular technological environment.
Further, none of the limitations recite technological
implementations details for any of the steps but, instead, only
recite broad functional language being performed by the generic
use of at least one processor. The claim limits also recite the use
of a processor, memory, and a network. However, the use of
these additionally elements described at a high level of generality
and perform generic computer functions such that it amount no
more than mere instruction to apply the exception to a particular
technological environment. Additionally, the limitations
“display in a dynamic display area, the order from the second
trader; display in a static display area aligned with the dynamic
display area the offer from the first trader” are extra solution
activity.
Final Act. 6. According to the Examiner, these additional elements do not
integrate the abstract idea into a practical application because they do not
impose any meaningful limits on practicing the abstract idea. Id. at 7.
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Appellant argues that limitations (e) and (f) of claim 37, which recite
“display in a dynamic area [610], the order from the second trader” and
“display in a static display area [620] aligned with the dynamic display area
[610] the offer from the first trade” respectively, provide a solution by “more
efficiently enabling the user to identify financially advantageous trades.”
Appeal Br. 5. Appellant attempts to draw a parallel to Trading
Technologies6 and alleges that claim 37 is “directed to solving problems
related to matching order for trading in the context of rapid market
movements.” Id. at 6. According to Appellant, similar to the claims in
Trading Technologies, the claims “focus and highlight the functional
relationships between a dynamic display area and a static display area in
Applicant’s GUI. Specifically, Applicant’s independent claim 37 highlights
the dynamic and static portions of Applicant’s GUI which have a proscribed
functionality directly related to the GUI structure.” Id.
The Examiner disagrees and states that the displaying limitations (e)
and (f) of claim 37 “do not rise above the mere function of displaying
information beyond extra solution activity.” Ans. 4. According to the
Examiner, the court in Trading Technologies
explained that the challenged patents do not simply claim
displaying information on a graphical user interface. The claims
require a specific, structured graphical user interface paired with
a prescribed functionality directly related to the graphical user
interface’s structure that is addressed to and resolves a
specifically identified problem in the prior state of the art.
Id. We agree with the Examiner.

6 Trading Technologies Int’l. Inc. v. CQG, Inc., 675 Fed. Appx. 1001 (Fed.
Cir. 2017).
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In Trading Technologies, the Federal Circuit affirmed the district
court’s holding that the patented claims (which recited a method and system
for displaying market information on a graphical user interface) did not
simply claim displaying information on a graphical user interface and were
not directed to an abstract idea; instead, the claims required “a specific,
structured graphical user interface paired with a prescribed functionality
directly related to the graphical user interface’s structure that is addressed to
and resolves a specifically identified problem in the prior state of the art.”
Trading Techs., 675 F. App’x at 1004. Thus, the distinguishing feature for
the claims in Trading Technologies was an advance in efficiency provided
by an improved graphical user interface as compared to other computer
processes.
In contrast to Trading Technologies, no such distinguishing features
are recited in claim 37, and the limitations before us do not concern an
improvement to graphical user interface technology. Appellant’s claim
merely recites displaying in a dynamic or static display area, which is
described in the Specification as being performed using a generic computer
such as a general purpose computer. See Spec. ¶¶ 26, 27, 102, Fig. 6
(display section 610 and screen table 620). Besides using a generic
graphical user interface as a tool in its ordinary capacity, Appellant has not
shown that the claimed invention reflects an improved graphical user
interface.
We recognize that “[s]oftware can make non-abstract improvements
to computer technology just as hardware improvements can, and sometimes
the improvements can be accomplished through either route.” Enfish, 822
F.3d at 1335. However, “to be directed to a patent-eligible improvement to
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computer functionality, the claims must be directed to an improvement to
the functionality of the computer or network platform itself.” Customedia
Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020)
(citing Enfish, 822 F.3d at 1336–39). Claim 37 recites generic components
(i.e., a processor and a memory) arranged in no particular way to perform
standard functions of identifying, receiving, determining, matching,
displaying, and transferring without improving computers or networks. The
Specification’s description of these components makes clear that they are
generic components that do not improve the functioning of a computer or
other technology, and which are used as tools in their ordinary capacity to
implement the abstract idea. See, e.g., Spec. ¶¶ 26–27, Fig 1.
We agree with the Examiner that claim 37 lacks any additional
elements sufficient to integrate the abstract idea into a practical application.
Accordingly, claim 37 is directed to a judicial exception.
Step Two of the Alice Framework (2019 Revised Guidance, Step 2B)
The Examiner next considers whether claim 37 recites additional
elements, individually, or as an ordered combination, that provide an
inventive concept. Alice, 573 U.S. at 217–18. The second step of the Alice
test is satisfied when the claim limitations involve more than performance of
well-understood, routine, and conventional activities previously known to
the industry. Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018).
The Examiner finds that claim 37 lacks additional elements that are
sufficient to amount to significantly more than the judicial exception, and
“when considered both individually and as an ordered combination do not
amount to significantly more than the abstract idea.” Final Act. 7. The
Examiner states that the mere instruction to apply a judicial exception using
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a generic conventional computer component cannot provide an inventive
concept, especially because the generic computer components are claimed at
a high level of generality to perform well-understood, routine, or
conventional functions “which amount to no more than generally linking the
use of the judicial exception to the particular technological environment.”
Id.
Appellant does not dispute the Examiner’s evaluation under Step 2B.
As such, it is undisputed that claim 37 does not contain an inventive concept.
Therefore, we are not apprised of error in the rejection of claim 37 under
Step 2B for lacking an inventive concept sufficient to transform the abstract
idea into patent-eligible subject matter.
Accordingly, we sustain the rejection of independent claim 37 as
directed to a judicial exception without significantly more, and dependent
claims 38–41, 43, and 44, which fall with claim 37.
Rejection II
35 U.S.C. § 112, first paragraph
The Examiner rejects claims 37–41, 43, and 44 as failing to comply
with the written description requirement because “the [S]pecification does
not provide written description support for the feature ‘a static display area
aligned with the dynamic display area’.” Final Act. 8.
Alleging error in the rejection, Appellant argues that Figure 6 and
pages 37–38 of the Specification provide support for this feature. Appeal
Br. 7. Appellant contrasts the dynamic display section 610 in Figure 6,
which is “continually updated so that the prices reflect market value as close
to real time as possible,” to a description of displaying the contents of table
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620 in a static fashion, namely only ‘[w]hen a posted order is chosen.’” Id.
(citing Spec. 37). According to Appellant,
once a user selects one of the displayed barter orders, the barter
order is removed from the dynamic display section and the
buy/sell legs of the order are added to static display section 620
aligned directly below the dynamic display area 610. The
dynamic and static display areas are functionally related, and the
selection and removal of the selected barter order from the
dynamic display section 610 to the static display section 620
directly affects the list of available matched barter orders which
is immediately updated following the selection. In that way, the
present invention assists and allows the user to visually track
what he/she has selected to trade and what is still available to
trade.
Id. (citing Spec. 37–38).
In response to Appellant’s arguments, the Examiner states:
There is nothing in figure 6 which shows, or even implies an area
of the display is static. Table 620, which applicants assert is
static, contains no data in the image. If it were static, there would
never be data in the table ever. However contrary to applicant’s
arguments the table data is described to be updated, and therefore
not static.
Ans. 6. We are persuaded of error.
There is a presumption that an adequate written description of the
claimed invention is present in the specification as filed; thus the examiner
has the initial burden, after a thorough reading and evaluation of the content
of the application, of presenting evidence or reasons why a person skilled in
the art would not recognize the written description of the invention as
providing adequate support for the claimed invention. In re Wertheim, 541
F.2d 257, 262 (CCPA 1976). Appellant’s position here is more persuasive,
at least because the Examiner’s sole focus is on Table 620 in Figure 6. The
Examiner does not appear to consider Appellant’s explanation and
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disclosure as to the contrasting and functionally related dynamic display area
610 and static display section 620. For instance, an artisan would
understand that the opposite condition of static is dynamic, which may be
reflected in tables or data display areas as described in the Specification.
The Examiner’s narrow interpretation of the term “static” and inadequate
evaluation and reasoning fails to satisfy the initial burden required. Indeed,
“[t]he fundamental factual inquiry is whether the specification conveys with
reasonable clarity to those skilled in the art that, as of the filing date sought,
applicant was in possession of the invention as now claimed.” MPEP
§ 2163 (quoting Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed.
Cir. 1991)).
Accordingly, we do not sustain the rejection of claims 37–41, 43, and
44 as failing to comply with the written description requirement.
Rejection III
35 U.S.C. § 103(a)
We are not persuaded by Appellant’s argument that Gutterman fails to
teach limitations (e) and (f) of claim 37. Appeal Br. 8–9.
As the Examiner correctly finds, which Appellant does not adequately
dispute, column 12 lines 48–56 of “Gutterman teaches the dynamic display
(‘touch-sensitive up and down arrows’) and lines 30-41 teach a static display
as does Figure 2b.” Ans. 5. Also, the fact that Gutterman may not use the
terms “dynamic” or “static” as part of its disclosure (Appeal Br. 9), which
Appellant’s disclosure also fails to do, is not dispositive and does not negate
the teachings of Gutterman, as supported by the Examiner’s findings.
Because we are not apprised of Examiner error in the rejection of
claims 37–41, 43, and 44 under 35 U.S.C. § 103(a), we sustain the rejection.
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CONCLUSION
Rejection I under 35 U.S.C. § 101 is affirmed.
Rejection II under 35 U.S.C. § 112, first paragraph, is reversed.
Rejection III under 35 U.S.C. § 103(a) is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
37–41, 43,
44
101 Eligibility 37–41, 43,
44

37–41, 43,
44
112, first
paragraph
Written Description 37–41, 43,
44
37–41, 43,
44
103(a) Gutterman, Popolo,
Cristofich, Barron’s,
AAPA, Schmerken
37–41, 43,
44

Overall Outcome: 37–41, 43,
44

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