Thomas P. Anderson

Patent Trials and Appeals Board

Sep 27, 2019

13917230 - (D) (P.T.A.B. Sep. 27, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/917,230 06/13/2013 Thomas P. Anderson 3820 4783
98580 7590 09/27/2019
Vitale, Vickrey, Niro & Gasey LLP
311 S. Wacker Drive
Suite 2470
Chicago, IL 60606
EXAMINER
MADAMBA, CLIFFORD B
ART UNIT PAPER NUMBER
3692
MAIL DATE DELIVERY MODE
09/27/2019 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 THOMAS P. ANDERSON
__________

Appeal 2017–009823
Application 13/917,2301
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
AMEE A. SHAH, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Thomas P. Anderson (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the Final Rejection of claims 1–7 and 10–15. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 The Appellant identifies the Application's inventor, Thomas P. Anderson
as the real party in interest. Br. 1.
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THE INVENTION
Claim 1, reproduced below with emphasis, is illustrative of the subject
matter on appeal.
1. A system for operating and creating a futures spread
exchange comprising:
an instrument derived from a first event occurring on a
first open exchange and a second event occurring on second
open exchange;
a trading platform exchanging a plurality of said
instruments;
a computer monitor integral with the trading platform
that tracks the first event from the first open exchange trading
in a deliverable currency and the second event from the second
open exchange trading in a deliverable currency wherein said
deliverable currency of said first and said second open
exchanges trade using different monetary currencies, said
monitor activates a conversion mechanism upon a selected
event;
a database integral with the trading platform, said
database storing a plurality of the instruments;
said database containing an exchange medium of one or
more neutral exchange values;
said database storing a trading symbol for the
instruments;
said database containing a memory for storing a
tradeable instrument and the value of the tradeable instrument;
the computer conversion mechanism integral with the
trading platform configured to select an instrument from one of
the instruments stored in the database based upon the selected
event from the first and second open exchange;
said computer conversion mechanism configured to
select a neutral exchange value from said database based on the
selected instrument;
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said computer conversion mechanism including a
computer server configured to convert said event from said first
or second open exchange from said deliverable currency of said
first or second exchange to a selected neutral exchange value;
and
applying the neutral exchange value to the event from the
first open exchange and the event from the second open
exchange to establish a value associated with the tradeable
instrument;
a publishing device configured to publish the symbol and
value associated with the tradeable instrument;
an independent exchange integral with the trading
platform configured to accept[ ] a bid and an offer information
based on the value of the tradeable instrument; and
a processor within said independent exchange that
coordinates a trade of the tradeable instrument based upon said
bid and offer information.

THE REJECTION
The following rejection is before us for review:
Claims 1–7 and 10–15 are rejected under 35 U.S.C. § 101 for
claiming patent-ineligible subject matter.

ISSUE
Did the Examiner err in rejecting claims 1–7 and 10–15 under
35 U.S.C. §101 for claiming patent-ineligible subject matter?
ANALYSIS
The rejection of claims 1–7 and 10–15 under 35 U.S.C. §101 for claiming
patent-ineligible subject matter.
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Representative claim
The Appellant argued these claims as a group. App. Br. 8–14. We
select claim 1 (reproduced above) as the representative claim for this group,
and the remaining claims 2–7 and 10–15 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(iv) (2016).
Preliminary comment
The Examiner cites prior USPTO Guidance. See e.g., Final Act. 9
(“the interim guidelines FR 12/16/2014 Vol. 79 No. 241”). However, said
guidance has been superseded by the 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “2019
Revised 101 Guidance”). 2019 Revised 101 Guidance, 84 Fed. Reg. at 51
(“Eligibility-related guidance issued prior to the Ninth Edition, R–08.2017,
of the MPEP (published Jan. 2018) should not be relied upon.”).
Accordingly, our analysis will not address the sufficiency of the Examiner’s
rejection against prior guidance. Rather, our analysis will comport with the
2019 Revised 101 Guidance.
Introduction
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor.”
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In that regard, claim 1 covers an “apparatus” and is, thus, statutory
subject matter for which a patent may be obtained.2
Although the Examiner agrees that the claim covers statutory subject
matter, the Examiner states that “the claim is directed to a process.” Final
Act. 9. As we read the claim, it sets forth a “system” comprising elements
(e.g., trading platform, database, etc.) not steps.
Nevertheless, the § 101 provision “‘. . . contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.’” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)).
In that regard, notwithstanding claim 1 covers statutory subject
matter, the Examiner has raised a question of patent-eligibility on the ground
that claim 1 is directed to an abstract idea. Eligibility is a question of law
based on underlying facts. SAP Am., Inc. v. Investpic, LLC, 890 F.3d 1016,
1020 (Fed. Cir. 2018).
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether a “claim is to a statutory category.” 2019
Revised 101 Guidance, 84 Fed. Reg. at 53; see also id. at 53–54
(“[C]onsider[] whether the claimed subject matter falls within the four
statutory categories of patentable subject matter identified by 35 U.S.C.
[§] 101 . . . .”).
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Alice step one – the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Id. at 218
(emphasis added).
The Examiner determined that
The claim recites the steps of creating a futures contract whose
value is not necessarily tied to any particular actual currency in
order to avoid the need to convert the monetary value of the
futures contract traded in different monetary currencies. In
other words, the claim describes steps for facilitating the
creation of a futures spread contract having a neutral exchange
value in an automated manner.
Final Act. 9
The Appellant contends that
The Examiner’s § 101 rejection erroneously characterizes
the claim as “describe[ing] steps for facilitating the creation of a
futures spread contract having a neutral exchange value in an
automated manner.” (Office Action, p. 9) It appears that this is
the abstract idea allegedly claimed by Claim 1. Claim 1,
however, does not merely describe steps for creating a futures
spread contract – instead, the claim is directed to a system for
operating and creating an exchange, (Claim 1, preamble) and
further includes computer structure such as the claimed
conversion device. In other words, the claim is directed to a
physical exchange, not a futures spread contract, where the
exchange further addresses the problem of assigning value to
tradable instruments based on events occurring on two separate,
independent exchanges. The invention establishes a new
physical trading platform, not an abstract idea for a trading
instrument. The claimed invention therefore does not fall
within any of the abstract categories identified in the Office
Action. (e.g. p. 9).
Moreover, Claim 1 does not fall within the definition of
“abstract” because it includes concrete and tangible elements,
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rather than a mere idea. Claim 1’s concrete and tangible
elements include at least the claimed “trading platform;”
“computer monitor;” “a database integral with the trading
platform, said database storing a plurality of [] instruments;”
and a “computer conversion mechanism integral with the
trading platform.” The inclusion of these specific, concrete and
tangible elements, demonstrates that the invention is directed to
more than a mere idea and therefore “Step 2A” of the Alice
analysis should be answered in the negative. Claim 1 and its
dependent claims are not directed to an abstract idea.
Br. 10–11.
The Appellant also contends that “[c]laim 1 addresses the problem
arising from the realm of computer networks, namely how to trade a
commodity based upon two different trading platforms.” Br. 10. The
Appellant suggest that the claimed subject matter is directed to a specific
improvement in the way computers operate. See Br. 11 (“the Federal Circuit
reversed, because the limitations ‘are directed to a specific improvement in
the way computers operate, embodied in the self-referential table’ (quoting
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336–1338 (Fed. Cir. 2016))
. . . . As in this case, . . . . “).
Accordingly, there is a dispute over what claim 1 is directed to. Is it
directed to “facilitating the creation of a futures spread contract having a
neutral exchange value in an automated manner” (Final Act. 9) or, “a new
physical trading platform” (Br. 10) or “a specific improvement in the way
computers operate” (id. at 11)?

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Claim Construction3
We consider the claim as a whole4 giving it the broadest reasonable
construction5 as one of ordinary skill in the art would have interpreted it in
light of the Specification6 at the time of filing.
If one considers only the claim terms (a) “an instrument”; (b) “a
trading platform”; (c) “a computer monitor”; (d) “an exchange medium”; (e)
“a memory”; (f) “a computer conversion mechanism”; (g) “a computer
server”; (h) “a publishing device”; (i) “an independent exchange”; and (j) “a
processor”, the claim would appear to be directed to the physical aspects of
an electronic exchange as the Appellant argues. But the claim recites not
just these elements but also their operation including steps that must be
performed. This is exemplified by these two claim 1 limitations:

3 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed.Cir.2012), the court observed that ‘claim
construction is not an inviolable prerequisite to a validity determination
under § 101.’ However, the threshold of § 101 must be crossed; an event
often dependent on the scope and meaning of the claims.” Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48 (Fed. Cir. 2015).
4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
5 2019 Revised 101 Guidance, 84 Fed. Reg. at 52 n.14 (If a claim, “under its
broadest reasonable interpretation . . . .” (emphasis added)).
6 “First, it is always important to look at the actual language of the claims
. . . . Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir.
2017) (J. Linn, dissenting-in-part and concurring-in-part), citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), among others.
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[a] computer conversion mechanism including a computer
server configured to convert [an] event from [a] first or second open
exchange from [a] deliverable currency of said first or second
exchange to a selected neutral exchange value; and
applying the neutral exchange value to the event from the first
open exchange and the event from the second open exchange to
establish a value associated with the tradeable instrument;
Furthermore, when the claim is read in light of the Specification, it
becomes evident that the invention is not directed to the physical aspects of
the recited elements themselves, individually or in the combination as
claimed, but rather in a scheme “to bring to market a global complementary
set of trading instruments” (Spec. 3) that the recited elements are to carry
out. The Specification provides no physical details about the elements
themselves. They are generally disclosed as part of a so–called “Global
Futures Spread Exchange” (GFS–X). The elements that form the GFS–X
system or any particular arrangement they may have in the system is not the
central focus. Rather the focus is on what the GFS–X system is designed to
achieve; that is, “executi[ng] [ ] global spreads in a single currency”
(Spec. 6). To wit, referring to Fig. 2 (reproduced below), the Specification
explains the GFS–X system this way (emphasis added):
Quotes are publicly distributed on one or more open exchanges
50 which may trade using different currencies. Market makers
70 and 60 use the quotes from the open exchanges to formulate
underlying futures pricing and establish the spread price of the
two instruments. The quotes from the open exchanges 50 are
converted to a single currency 100 by a conversion device 100.
This is published not only to customers 70 but also on the GFS-
X 30 exchange. The GFS-X 30 exchange establishes the spread
quote 38 and displays the spread quote 38 within the GFS-X 30.
The GFS-X 30 exchange also displays a bid offer 32 and 34.
The spread quote 38, bid 32, offer 34 and trade 36 are
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conducted in a single currency within the GFS-X 30.
Customers on the GFS-X 30 exchange may execute a trade
utilizing the last trade spread quote 38 or on the bid 32 or offer
34. The executed trade 36 is then sent to a clearinghouse 20 for
settlement. The executed trade 36 may proceed through the
conversion device 100 prior to being sent to the clearing house
20.

Fig. 2 depicts the Global Futures Spread Exchange (GFS–X) system.
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The intrinsic evidence weighs in favor of characterizing the claimed
subject matter as being directed to executing certain trades, albeit in a
particular way (i.e., in a single currency). This is a reasonable
characterization based on reading the claim as a whole in light of the
Specification. Characterizing the claimed subject matter as being directed to
a “physical trading platform” (Br. 10) as the Appellant argues is less
accurate because the claim in fact describes more than that. To limit what
the claim is directed to to simply a “physical trading platform” strips the
claim of essential details of their operation including the recited steps
required to be performed in order to practice the claimed subject matter. It
also supports a construction of the claim that does not account for the
description of the invention in the Specification. The Specification is not
focused on a “physical trading platform” per se. That in and of itself is not
the advance in the art according the Specification. It is directed to more than
that. It is, as the claim reflects, more directed to a particular scheme for
executing certain trades (i.e., in a single currency).
The Abstract Idea7
Above, where we reproduce claim 1, we identify in italics the
limitations we believe recite an abstract idea.8 Based on our claim

7 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. 2019 Revised 101 Guidance, 84 Fed. Reg. at 53. Step 2A is
two prong inquiry.
8 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. “To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the claim
under examination (individually or in combination) that the examiner
believes recites an abstract idea . . . .” 2019 Revised 101 Guidance, 84 Fed.
Reg. at 54.
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construction analysis (above), we determine that said claim limitations are
directed to a particular scheme for executing trades. Executing trades is a
matter that falls within the enumerated “Certain methods of organizing
human activity – fundamental economic principles or practices” grouping of
abstract ideas set forth in the 2019 Revised 101 Guidance.
Improvement to other technology or technical field 9 (Appellant’s
Argument)
The Examiner’s characterization of what the claim is directed to
(“facilitating the creation of a futures spread contract having a neutral
exchange value in an automated manner” (Final Act. 9)) is similar to our
own (i.e., executing trades), albeit our characterization is described at a
higher level of abstraction. Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1240–41 (Fed. Cir. 2016):
An abstract idea can generally be described at different levels of
abstraction. As the Board has done, the claimed abstract idea
could be described as generating menus on a computer, or
generating a second menu from a first menu and sending the
second menu to another location. It could be described in other

9 This corresponds to Prong Two (“If the Claim Recites a Judicial Exception,
Evaluate Whether the Judicial Exception Is Integrated Into a Practical
Application”) of Step 2A of the 2019 Revised 101 Guidance. 2019 Revised
101 Guidance, 84 Fed. Reg. at 54. “A claim that integrates a judicial
exception into a practical application will apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception.” Id. One consideration, implicated here,
that is “indicative that an additional element (or combination of elements)[]
may have integrated the exception into a practical application” (id. at 55) is
if “[a]n additional element reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field” (id.).

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ways, including, as indicated in the specification, taking orders
from restaurant customers on a computer.
Presumably, the Appellant would dispute our characterization just as it has
disputed the Examiner’s characterization.
We have reviewed the record and are unpersuaded as to error in the
Examiner’s characterization of what claim 1 is directed to.
The Appellant argues that “[c]laim 1 does not fall within the
definition of ‘abstract’ because it includes concrete and tangible elements,
rather than a mere idea.” Br. 10. Whether or not something as claimed is
“concrete” and “tangible” is not the test for determining whether claimed
subject matter is judicially-excepted from patent-eligibility. If that were the
case, claims reciting computers would necessarily be patent eligible. But
that is not the case. See Alice, 134 S.Ct. at 2358–59:
The fact that a computer “necessarily exist[s] in the physical,
rather than purely conceptual realm” . . . is beside the point.
There is no dispute that a computer is a tangible system (in
§ 101 terms, a “machine”), or that many computer-implemented
claims are formally addressed to patent-eligible subject matter.
But if that were the end of the § 101 inquiry, an applicant could
claim any principle of the physical or social sciences by reciting
a computer system configured to implement the relevant
concept.
The Appellant argues that
Claim 1 addresses the problem arising from the realm of
computer networks, namely how to trade a commodity based
upon two different trading platforms. For example, the claimed
computer conversion mechanism assigns a value to a tradable
instrument based on events occurring on two separate,
independent exchanges. (See e.g. specification, p. 11, line 17 –
p. 12, line 3).
Br. 10. We reproduce page 11, line 17 – page 12, line 3 of the Specification:
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First, the market maker 134 or 34 may go to each
individual market such as CME [10 Year Note] and Eurex [10
Year Bund] and execute the trade independently of one another
which would involve risks, variation margining on two
exchanges and expensive exchange fees.
Alternatively, the trading participant 134 or 34 can
“make” a market in the futures exchange option for the 10 year
inter-market spread, easily and quickly get market exposure as
desired coupled with margin efficiency, all the while collecting
exchange fees rather than paying. The futures exchange option
for the 10 year market spread is sent to the GFS-X 130 or 30
and converted to U.S. dollars by the conversion device 100 or
200 before it is posted on the GFS-X 130 or 30. The option is
published in the exchange GFS-X 30 or 130 for a market taker
132 and 32 to bid or purchase.
We do not see there, or anywhere else in the Specification, any discussion of
a technical problem being solved, let alone in “the realm of computer
networks” (Br. 10).
It is true that specific asserted improvements in technology, when
claimed, can render claimed subject matter not directed to an abstract idea.
Cf. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316
(Fed. Cir. 2016) (“When looked at as a whole, claim 1 is directed to a
patentable, technological improvement over the existing, manual 3–D
animation techniques.”). However, there is insufficient evidence in the
record before us that the claimed subject matter reflects any specific asserted
improvement in technology.
“The ‘abstract idea’ step of the inquiry calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim’s
‘character as a whole’ is directed to excluded subject matter.’” Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257–58 (Fed. Cir. 2016)
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(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)); see also Enfish, 822 F.3d at 1335; see also Ancora Techs., Inc.
v. HTC Am., Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018) (“We examine the
patent’s ‘claimed advance’ to determine whether the claims are directed to
an abstract idea.”) (quoting Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d
1299, 1303 (Fed. Cir. 2018)). “In cases involving software innovations, this
inquiry often turns on whether the claims focus on ‘the specific asserted
improvement in computer capabilities . . . or, instead, on a process that
qualifies as an ‘abstract idea’ for which computers are invoked merely as a
tool.’” Id. (quoting Finjan, 879 F.3d at 1303); see BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1285–86 (Fed. Cir. 2018). Computers are
improved not only through changes in hardware; “[s]oftware can make non-
abstract improvements to computer technology . . . .” Enfish, 822 F.3d at
1335; see Finjan, 879 F.3d at 1304 (“We have several times held claims to
pass muster under Alice step one when sufficiently focused on such
improvements.”).
The Specification’s description of the problem and solution shows the
advance over the prior art by the claimed invention is in a particular scheme
for executing certain types of trades, not on any technical improvement, such
as an improvement in computer functionality. According to the
Specification, the problem is, inter alia, that “[h]istory has proven that start-
up futures exchanges which compete head-to-head with incumbent
exchanges and their established core products have a propensity to fail.”
Spec. 1.
Unlike the driving force behind previous failed
exchanges, GFS-X instruments will complement existing
exchange traded products and add to the volume and liquidity at
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incumbent exchanges. The GFS-X pricing data relies on
widespread market-making by liquidity providers based on
other exchange pricing feeds. The outcome of this quoting
structure is the tightest possible bid-offer spreads as underlying
markets constantly shift.
Id. at 2.
The primary goal of the GFS-X is to bring to market a global
complementary set of trading instruments. GFS-X instruments
will enhance the volume of established exchange core products
while increasing participation and reducing risk. The intention
is to minimize the barriers to exchange access through a new
and unique exchange fee structure.
Id. at 3–4. “In essence, the GFS-X [ ] offers a unique exchange platform for
the execution of global spreads in a single currency which provides ease in
clearing and margining at the clearing house and futures commission
merchant (FCM) level.” Id. at 6. The Specification describes said
“platform” (the GFS–X system) in terms of what it is designed to achieve.
See our discussion above in the Claim Construction section.
Accordingly, within the meaning of the 2019 Revised 101
Guidance, we find there is no integration into a practical application.
We have considered all of the Appellant’s arguments challenging the
Examiner’s determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner’s determination that claim 1 is directed to an abstract idea.

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Alice step two – Does the Claim Provide an Inventive Concept?10
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
In that regard, the Examiner determined, inter alia, that the
the recitation of the additional element(s) including a trading
platform, first and second open exchanges, computer monitor,
computer conversion mechanism, database, computer server,
publishing device, and processor(s) to implement the steps
described above are not enough by itself to transform the
exception into a patentable exception, because the elements
recited are generic computer components performing generic
computer components performing generic computer functions
at a high level of generality. Merely using generic computer
components to perform the identified basic functions does not
constitute meaningful limitations that would amount to
significantly more than the abstract idea.
Final Act. 10.
The Appellant argues that “the claim recites elements that resolve a
particular computer issue, and are sufficiently limited in scope so as not to
pre-empt any fundamental concept.” Br. 13. In the same vein, the Appellant
further argues that
Assigning a value based on events from two different
exchanges is not a generic computer functionality, but rather a

10 This corresponds to Step 2B of the 2019 Revised 101 Guidance page 56
(“[I]f a claim has been determined to be directed to a judicial exception
under revised Step 2A, examiners should then evaluate the additional
elements individually and in combination under Step 2B to determine
whether they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself).”).
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patentable improvement. The combined elements solve the
problem of trading a commodity based upon two different
trading platforms. This is not a case where the claim pre-empts
all trading.
Id. at 13–14. The Appellant also cites BASCOM Global Internet Servs., Inc.
v. AT&T Mobility LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016) (“[T]he claims
may be read to ‘improve[ ] an existing technological process.’”) (emphasis
added; citation omitted) in arguing that the claimed subject matter “is a
technology–based solution rather than an abstract-idea-based solution.” Id
at 13.
We have already acknowledged that specific asserted improvements
in technology, when claimed, can render claimed subject matter not directed
to an abstract idea. See McRO, 837 F.3d at 1313 (“[T]he claimed
improvement here is allowing computers to produce ‘accurate and realistic
lip synchronization and facial expressions in animated characters’ that
previously could only be produced by human animators.”) (emphasis added).
Here, however, there is insufficient evidence in the record before us that the
claimed subject matter reflects any specific asserted improvement in
technology. Rather than being directed to any specific asserted
improvement in technology, the record supports the view that the claimed
subject matter is directed to a fundamental economic practice; that is,
executing trades, albeit certain types of trades executed in a particular way
(i.e., in a single currency).
Above, we noted that specific asserted improvements in technology
can turn claimed subject matter away from being directed to an abstract
under step one of the Alice framework. This is consistent with the case law.
See Ancora, 908 F.3d at 1347 (“We have several times held claims to pass
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muster under Alice step one when sufficiently focused on such
improvements.”). Such an argument, as the Appellant has done here, can
also challenge a determination under step two of the Alice framework. See
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354–55 (Fed. Cir. 2014).
“[R]ecent Federal Circuit jurisprudence has indicated that eligible subject
matter can often be identified either at the first or the second step of the
Alice/Mayo [framework].” 2019 Revised 101 Guidance, 84 Fed. Reg. at 53;
see also id. at n.17.
Be that as it may, we are unpersuaded that claim 1 as currently drafted
presents an element or combination of elements indicative of a specific
asserted improvement in technology, thereby rendering the claimed subject
matter sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon the abstract idea itself.
We have reviewed the Specification and, as explained above, we can
find no suggestion of any technical improvements. The Specification is
focused on a trade executing scheme, not on any on the recited elements
themselves, individually or in the combination as claimed. Rather than
focusing on the (a) “instrument”; (b) “trading platform”; (c) “computer
monitor”; (d) “exchange medium”; (e) “memory”; (f) “computer conversion
mechanism”; (g) “ computer server”; (h) “publishing device”; (i)
“independent exchange”; and/or (j) “processor,” the Specification focuses on
what they are to achieve, elements (a)–(j) acting merely as conduits for
practicing said scheme. Cf. In re TLI Communications LLC Patent
Litigation, 823 F.3d at 612 (Fed. Cir. 2016) (“Put differently, the telephone
unit itself is merely a conduit for the abstract idea of classifying an image
and storing the image based on its classification. Indeed, the specification
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notes that it ‘is known’ that ‘cellular telephones may be utilized for image
transmission,’ [U.S. Patent 6,038,295,] col. 1 ll. 31–34, and existing
telephone systems could transmit pictures, audio, and motion pictures and
also had ‘graphical annotation capability,’ id. at col. 1 ll. 52–59.”)
We are unpersuaded that the record supports interpreting the claim as
solving a computer problem as the Appellant has argued. Elements
(a) “[I]nstrument[s]”; (b) “trading platform[s]”; (c) “computer monitor[s]”;
(d) “exchange medium[s]”; (e) “memor[ies]”; (f) “computer conversion
mechanism[s]”; (g) “ computer server[s]”; (h) “publishing device[s]”; (i)
“independent exchange[s]”; and/or (j) “processor[s]” were notoriously well–
known, and the recited functions and steps they are to perform according to
the claim ask nothing more of these elements than to use them for their
commonly–associated information–processing functions. Much like the
“data storage unit” and “computer, coupled to said storage unit” in the
claims of Alice (U.S. Patent 7,149,720, claim 1), “the claims here [fail to] do
more than simply instruct the practitioner to implement the abstract idea […]
on a generic computer.” Alice, 573 U.S. at 225.
For the reasons discussed above, we are unpersuaded that the record
supports interpreting the steps recited in the claim as yielding any
improvement in technology.
Finally, as to the question of preemption, “[w]hat matters is whether a
claim threatens to subsume the full scope of a fundamental concept, and
when those concerns arise, we must look for meaningful limitations that
prevent the claim as a whole from covering the concept’s every practical
application.” CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281
(Fed. Cir. 2013) (Lourie, J., concurring). Pre-emption is not a separate test.
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To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time,
from practicing the claimed invention. See 35 U.S.C. § 154.
Rather, the animating concern is that claims should not be
coextensive with a natural law, natural phenomenon, or abstract
idea; a patent-eligible claim must include one or more
substantive limitations that, in the words of the Supreme Court,
add “significantly more” to the basic principle, with the result
that the claim covers significantly less. See Mayo 132 S. Ct. at
1294. Thus, broad claims do not necessarily raise § 101
preemption concerns, and seemingly narrower claims are not
necessarily exempt.
Id. See also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (“[w]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.”). Because we find the claimed subject matter covers
patent-ineligible subject matter, the pre-emption concern is necessarily
addressed. “Where a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, [] preemption concerns
are fully addressed and made moot.” Ariosa Diagnostics, 788 F.3d at 1379.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 1 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into an inventive application.
We have considered all of the Appellant’s remaining arguments and
find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determination that representative claim 1, and claims 2–7 and 10–15, which
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stand or fall with claim 1, are directed to an abstract idea and do not present
an “inventive concept,” we sustain the Examiner’s conclusion that they are
directed to patent-ineligible subject matter for being judicially-excepted
from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc., 656 F. App’x
991, 997 (Fed. Cir. 2016) (“We have considered all of LendingTree’s
remaining arguments and have found them unpersuasive. Accordingly,
because the asserted claims of the patents in suit are directed to an abstract
idea and do not present an ‘inventive concept,’ we hold that they are directed
to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g., OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016).
DECISION
The decision of the Examiner to reject claims 1–7 and 10–15 is
affirmed.

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