Ex Parte Borro et al

Patent Trial and Appeal Board

Feb 29, 2016

11144167 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111144,167 0610312005
30756 7590 03/02/2016
BANNER & WITCOFF, LTD.,
ATTORNEYS FOR CLIENT NO. 006119
10 SOUTH WACKER DRIVE
SUITE 3000
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Todd Borro
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
006119.00042 3720
EXAMINER
ABDI, KAMBIZ
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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):
PT0-30756@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte TODD BORRO and PAUL WATERS
Appeal2013-008499
Application 11/144,167 1
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and ROBERT J.
SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision of December 22, 2011, rejecting claims 1-9 and 21-24. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 According to Appellants, the real party in interest is Chicago Mercantile
Exchange, Inc. Appeal Br. 1.
Appeal2013-008499
Application 11/144, 167
ILLUSTRATIVE CLAIM
1. A method of matching trade data, the method
compnsmg:
(a) receiving trade data from one side of a trade at a
match server;
(b) at the match server attempting to match the trade data
from one side of a trade with data from an opposite side of a
trade by applying a first match criteria that identifies a set of
match critical fields that must match for a match to be declared;
( c) when the trade data from one side of a trade remains
unmatched after (b ), storing the trade data from one side of a
trade in an aging queue for a first predetermined time period to
individually age the trade data from one side of a trade
irrespective of an amount of time other trade data has been
stored in the aging queue before attempting to match the trade
data from one side of a trade a second time; and
( d) at the expiration of the first predetermined time after
storing the trade data from one side of a trade in the aging
queue, at the match server attempting to match the trade data
from one side of a trade with data from the opposite side of a
trade by applying a second match criteria that identifies a set of
match critical fields that must match for a match to be declared;
wherein the second match criteria is less stringent than the first
match criteria, and declaring that the trade data from one side of
a trade matches the data from the opposite side of the trade if a
match is identified under the first match criteria or the second
match criteria.
THE REJECTION
The Examiner relies upon the following references:
Hawkins et al.
(hereinafter "Hawkins")
Boyle et al.
(hereinafter "Boyle")
US 6,247,000 Bl
US 7,451,103 Bl
2
Jun. 12,2001
Nov. 11, 2008
Appeal2013-008499
Application 11/144, 167
The Appellants seek review of the rejections of claims 1-9 and 21-24,
all of which are rejected under 35 U.S.C. § 103(a) as being unpatentable
over Hawkins and Boyle. Appeal Br. 3---6.
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
Claims 1, 4 and 21 are independent claims. Appeal Br. 8-10, Claims
App. The Appellants contend that the Examiner erred in rejecting claims 4
and 21 for the same reasons that the Appellants provide as to claim 1 and the
Appellants do not offer any arguments specific to any of the dependent
claims. Appeal Br. 5-6. Because the Appellants rely upon the same
arguments with respect to all appealed claims, the discussion herein is
limited to claim 1. See 37 C.F.R. § 41.37(c)(iv). As explained below, the
rejection of claim 1 is sustained.
In rejecting claim 1, the Examiner relied on a combination of Hawkins
and Boyle. Non-Final Act. 2.
Hawkins teaches an automated method for matching financial
transaction information, wherein unmatched trades may be subjected to
renewed matching attempts employing a variety of less-stringent matching
criteria. See Hawkins Abstract, col. 19, 11. 23-28.
Boyle teaches an automated method for matching investment account
records held by different custodians. Boyle Abstract. In particular, Boyle
discloses re-attempting to match information manually (by user initiation), at
scheduled times, or automatically (repeatedly, at a selectable interval). See
id. col. 24, 11. 13-54. See also id. col. 33, 11. 50-53 ("For actions to be
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performed in automatic mode, the scheduler ensures that the setup actions
are performed every n minutes where n is the schedule time system
parameter.") Boyle also discloses limiting the matching attempts to "New
data only" (not yet subjected to matching efforts), to "Unmatched data only"
(already subject to an unsuccessful match attempt), or employing "All data."
See id. col. 24, 11. 14--19. See also id. col. 34, 11. 16-27.
The Examiner (Non-Final Act. 3) stated that Hawkins discloses the
claimed subject matter of claim 1, but does not "explicitly disclose" the
following limitation (Appeal Br. 8, Claims App.):
storing the trade data from one side of a trade in an aging queue
for a first predetermined time period to individually age the
trade data from one side of a trade irrespective of an amount of
time other trade data has been stored in the aging queue before
attempting to match the trade data from one side of a trade a
second time.
However, the Examiner says that it would have been obvious to combine
Hawkins with Boyle's teaching of resuming the matching operation (as to
unmatched items) at scheduled times or automatically at defined intervals,
thus rendering claim 1 unpatentable. Non-Final Act. 3.
In response, the Appellants contend that Boyle fails to meet the claim
limitation identified above, because Boyle employs "batch processes" and
claim 1 "is clearly distinct from batch processing." Appeal Br. 4--5.
The Examiner's Answer offers two responses. First, the Examiner
proposes that the limitation should be construed in a manner that ascribes no
weight to terms that are not "actively recited" and that merely set forth an
"intended use" of the recited "aging queue," such that "the limitation
becomes simply 'storing the trade data from one side of a trade in an aging
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queue for a first predetermined time period' which is clearly taught by
Boyle." Answer 10 (citing Boyle Figs. 37, 38, col. 23, line 56-col. 24, line
63). Second, the Examiner contends that, even if the claim language were
regarded as "actively recited," Boyle nevertheless teaches the disputed
limitation and the Appellants' "batch process argument ... is irrelevant to
the recited claim language." Answer 10.
In their Reply Brief, the Appellants disagree with the Examiner's
proposed claim construction, which they assert would be "inconsistent with
the Appellants' specification" - in particular, the statement that "[a]
'predetermined time period' does not include a time interval that ends when
all trade data is acted on in a batch process." Reply Br. 2-3 (quoting Spec.
i-f 40). As to the Examiner second argument, the Appellants repeat their
position that Boyle cannot teach the limitation at issue because Boyle
involves "batch processing," which "would not individually age trade data
irrespective of an amount of time other trade data has been stored in the
aging queue." Reply Br. 3.
Yet, the Appellants fail to explain how claim 1 would supposedly
exclude "batch processing." The Specification criticizes certain aspects of
prior art embodiments that involved batch processing; nevertheless, the
disputed claim limitation, as drawn, is broad enough to encompass the
teachings of Boyle, notwithstanding its batch-processing features.
Notably, the Specification's criticisms of batch processing concern
aspects of the disclosure that are not required by claim 1. One alleged
shortcoming of batch-processing prior art is that such embodiments lower
the matching criteria (for re-attempted matching) as to all unmatched trades
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- as opposed to relaxing the criteria in a stepwise manner, depending upon
how long a given trade has remained unmatched:
With prior art match systems, trade data is treated in a batch
manner and match criteria is relaxed the same amount for all
unmatched trades at a given time. Aging trades separately,
provides for a more efficient match system. Moreover, several
additional levels of match criteria may be used. For example,
instead of a match module running batch processes twice a day
with different levels of match criteria, the match module may
make 10 or more match attempts using different match levels of
match criteria.
Spec. i-f 33. However, claim 1 does not require multiple levels of matching
criteria; it simply requires one reduced level that is applied in a second
matching attempt. See Appeal Br. 8, Claims App. ("storing the trade
data ... before attempting to match the trade data ... a second time" and
"applying a second match criteria ... wherein the second match criteria is
less stringent than the first match criteria").
Another alleged drawback of batch-processing prior art concerns its
uneven burdening of processing resources:
[I]nefficient utilization of resources results from extensive
processing resources being consumed while the batch processes
are executed and no processing resources being consumed at
times between the execution of the batch processes.
Spec. i-f 5. Here, again, the feature of avoiding this circumstance is not
provided by claim 1, which does not demand a temporal distribution of the
demand on processing resources. To the contrary, the method set forth in
claim 1 calls for concentrating the processing burden at just two times - i.e.,
during the first matching attempt of i-f (b) and the second matching attempt
ofi-f (d). See Appeal Br. 8, Claims App.
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Furthermore, claim 1 affirmatively recites features indicating that it
would include batch processing, as implemented in Boyle, within its scope.
Specifically, claim 1 describes processing "trade data" (Appeal Br. 8, Claims
App.)- a plural term that would permit processing a batch of trade items-
rather than the more precisely singular expression used elsewhere in the
Specification, "each element of trade data" (Spec. i-f 3 5). This understanding
is reinforced by the language of claims 9 and 22 (depending from
independent claims 4 and 21, respectively). Claims 9 and 22 state that the
recited "data from an opposite side of a trade" (of their respective
independent claims, 4 and 21) comprises "multiple trades" (claim 9) or "data
for multiple trades" (claim 22). Appeal Br. 9-10, Claims App. (emphasis
added). If "data from an opposite side of a trade" may be plural, then the
same may be said of the "trade data" (of claims 4 and 21) with which they
are compared for potential matching. See id. Hence, the recited "trade data"
of claim 1 (id. at 8) may also constitute groups or batches of trades, rather
than an individual trade item. See Omega Eng'g, Inc. v. Raytek Corp., 334
F.3d 1314, 1334 (Fed. Cir. 2003) ("[W]e presume, unless otherwise
compelled, that the same claim term in the same patent or related patents
carries the same construed meaning.")
The remark in the Specification that "[a] 'predetermined time period'
does not include a time interval that ends when all trade data is acted on in a
batch process" (Spec. i-f 40) is not to the contrary. Notably, Boyle permits
the attempted matching ("Match Option") to be limited to "New data only,"
"Unmatched data only," or to apply to "All data" (Boyle col. 24, 11. 14--18),
such that choosing "Unmatched data only" in Boyle would not involve "a
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time interval that ends when all trade data is acted on" (Spec. i-f 40, emphasis
added).
The foregoing analysis does not implicate the Examiner's proposal
that no weight be ascribed to particular claim terms (Answer 9-10). In any
event, "[c]laims must be interpreted \vith an eye toward giving effect to all
terms in the claim.~' lr?:.fo-Hold, inc. v. J\1UZAKLLC, 783 F.3d 1365, 1373
(Fed. Cir. 2015) (citation omitted).
In view of the discussion, herein, the Appellants' arguments that the
Examiner erred in rejecting claim 1 are not persuasive. The rejection of
claim 1 is sustained.
Because the rejection as to claim 1 is sustained, the rejections as to
claims 2-9 and 21-24, which stand or fall with claim 1, are also sustained.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-9 and 21-
24.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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