Ex Parte BRANDER et al

Board of Patent Appeals and Interferences

Jun 8, 2010

08976159 (B.P.A.I. Jun. 8, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NEIL FREDERICK BRANDER and
ANDREW JOHN ZELENKA
____________

Appeal 2009-007743
Application 08/976,159
Technology Center 3600
____________

Decided: June 8, 2010
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-007743
Application 08/976,159

2
STATEMENT OF THE CASE
Neil Frederick Brander, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-9 and 12-36. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART.1

THE INVENTION
Claim 1 is illustrative.
1. A system for settlement of a securities trade by obtaining
agreement as to the details of the trade among a broker,
institution, agent and interested parties comprising:
a. a computer system which enables the broker,
institution, agent and interested parties to send and
receive communications;
b. a standing instructions database containing sets
of instructions for trade settlement input by the
institution, the broker and the agent prior to the securities
trade;
c. a processing computer within the computer
system, which is coupled to the standing instruction
database and which is configured to:
i. receive a communication from the broker
containing notice of order execution information (a
broker communication);

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Nov. 25, 2002) and Reply Brief (“Reply Br.,” filed Dec. 27,
2006), and the Examiner’s Answer (“Answer,” mailed Dec. 11, 2008).
Appeal 2009-007743
Application 08/976,159

3
ii. receive a communication from the
institution containing institution allocation
instruction information (an institution
communication);
iii. match, at the processing computer, the
institution communication with the broker
communication based on information contained in
both communications;
iv. if there is a match, generate a
confirmation for the trade based on information
contained in the broker communication,
information contained in the institution
communication and information stored in the
standing instructions database; and
v. make available, from the processing
computer, the confirmation as a communication to
the institution, broker, agent and interested parties
for the exchange of money and securities to settle
the trade.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Hawkins
Lupien
US 5,497,317
US 6,098,051
Mar. 5, 1996
Aug. 1, 2000
Securities and Exchange Commission, Form 19b-4, Proposed Rule
Change by The Depository Trust Company, Pursuant to Rule 19b-4
under the Securities Exchange Act of 1934; 72 pages; Jan. 9, 1992
(DTC)
The following rejections are before us for review:
1. Claims 1-9, 12, 13, and 21-36 are rejected under 35 U.S.C. §103(a) as
being unpatentable over DTC and Hawkins.
Appeal 2009-007743
Application 08/976,159

4
2. Claims 14-17, 19, and 20 are rejected under 35 U.S.C. §103(a) as
being unpatentable over DTC and Lupien.
3. Claim 18 is rejected under 35 U.S.C. §103(a) as being unpatentable
over DTC, Lupien, and Hawkins.

ISSUE
Have the Appellants shown that the Examiner failed to establish a
prima facie case of obviousness?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer (3-
11).

ANALYSIS
The rejection of claims 1-9, 12, 13, and 21-36 under 35 U.S.C. §103(a) as
being unpatentable over DTC and Hawkins.
The Appellants argued claims 1-9, 12, 13, and 21-36 in four groups:
(1) claims 1-8, 21, 29, 30, 33 and 34; (2) claims 9, 12, 22-28, 35, and 36; (3)
claim 13; and (4) claims 31 and 32 (App. Br. 4). We select claims 1, 9, 13,
and 31 as the representative claims for these groups, respectively, and the
remaining claims in each group stand or fall with their respective
representative claims. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
Claim 1
We review “the obviousness rejection for error based upon the issues
identified by [A]ppellant, and in light of the arguments and evidence
thereon.” Ex Parte Frye, Appeal 2009-006013, 2010 WL 889747 *3-4
Appeal 2009-007743
Application 08/976,159

5
(BPAI Feb. 26, 2010) (Precedential) (Slip. Op. 9. ) “Specifically, the Board
reviews the particular finding(s) contested by an [A]ppellant anew in light of
all the evidence and argument on that issue.” (Id. at 10.)
The Examiner has argued that DTC discloses all the claim limitations
but for a processing computer, which Hawkins is relied upon. Answer 4-5.
The Examiner found that “[i]t would have been obvious to a person of
ordinary skill in the art at the time of the applicant’s invention to combine
the disclosure of the DTC report with Hawkins et al. One would have been
motivated to use this combination because it would provide the capability to
quickly and efficiently execute trading transactions.” Answer 5.
The Appellants argue that the Examiner has not made a prima facie
case of obviousness. But Appellants’ arguments are not commensurate in
scope with what is claimed.
The Appellants argue, for example, that the Examiner has failed to
show that DTC discloses “automatically matching received notice of
execution information from a broker with institution allocation instruction
information from an institution.” App. Br. 5. However, claim 1 does not
require automatically matching received notice of execution information
from a broker with institution allocation instruction information from an
institution. The claimed subject matter is drawn to an apparatus comprising
a computer system; a database containing sets of instructions; and a
processing computer within the computer system. Claim 1 requires a
processing computer within a computer system coupled to a standing
instruction database and configured to perform various functions, including
matching information. Accordingly, Appellants’ challenge to the prima
Appeal 2009-007743
Application 08/976,159

6
facie case of obviousness on the grounds that the prior art fails to lead one to
perform certain steps is inapposite.
Even if we assume arguendo that the Appellants meant to argue that
the prior art fails to disclose or lead one to a computer configured to perform
the functions claimed. The Appellants’ focus is nevertheless misplaced.
The Appellants’ focus is on matching the information contained in “a
communication from the broker containing notice of order execution
information (a broker communication)” (claim 1) and “a communication
from the institution containing institution allocation instruction information
(an institution communication)” (claim 1). App. Br. 6. A difference
between a claimed apparatus and that of the prior art that is based on the
content of information being processed is a difference grounded in
nonfunctional descriptive material. Nonfunctional descriptive material
cannot render nonobvious an invention that would have otherwise been
obvious. In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). Cf. In re
Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when descriptive material is
not functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability).
In that regard, the Appellants do not explain why the prior art
combination would not lead one of ordinary skill in the art to modify the
DTC system to include a computer configured to perform the functions
claimed; that is, a computer configured to receive communications, match
information in those communications, and, if there is a match, to generate a
confirmation which is made available to facilitate an exchange of money and
securities to settle a trade. In fact, the Appellants appear to agree with the
Appeal 2009-007743
Application 08/976,159

7
Examiner that DTC discloses receiving information and matching
information. App. Br. 5. The Appellants do argue that “the DTC reference
still requires input of trade settlement instructions (i.e., trade input) after
trade execution and during the trade settlement process ... .” App. Br. 7
(emphasis original). But, as we have already stated, this is not an argument
that is commensurate in scope with what is claimed. Claim 1 is not a
method claim that requires information to be matched prior to trade
execution and settlement.
We have considered the Appellants’ arguments but do not find that
they show the prima facie of obviousness of claims 1-8, 21, 29, 30, 33 and
34 was established in error.

Claim 9
The Appellants’ argument with respect to claim 9 is more to the point.
The Appellants argue over the matching function of the claimed processor.
However, the Appellants concede that “[t]he DTC reference describes, for
example, matching institution instructions with trade data received from the
broker-dealer.” App. Br. 8. Accordingly, there is no dispute that DTC
discloses matching information. The Appellants then argue that DTC does
not disclose that “[t]his [DTC] trade data, however, does not include a notice
of order execution.” App. Br. 8. But a difference between a claimed
apparatus and that of the prior art that is based on the content of the
information being matched is a difference grounded in nonfunctional
descriptive material. Nonfunctional descriptive material cannot render
Appeal 2009-007743
Application 08/976,159

8
nonobvious an invention that would have otherwise been obvious. See Ngai,
367 F.3d at 1339.
We have considered the Appellants’ argument but do not find that it
shows the prima facie of obviousness, of claims 9, 12, 22-28, 35, and 36,
was established in error.

Claim 13
The Appellants argue over data fields from “a notice of executed
order and an institution allocation instruction.” App. Br. 8 (emphasis
original). This is not an accurate characterization of what is claimed. Claim
13 calls for a “a broker communication containing data within data fields
designated by ....” and “an institution communication containing data within
data fields designated by ... .” Claim 13 requires a computer processor to
compare and match the data in these fields. Nevertheless, as with the prior
arguments over matching specific types of information (see discussion
above), this is an argument over a difference based on the content of the data
in the data fields which, as nonfunctional descriptive material, cannot render
nonobvious an invention that would have otherwise been obvious.
We have considered the Appellants’ argument but do not find that it
shows the prima facie of obviousness, of claim 13, was established in error.

Claim 31
The Appellants argue that neither DTC nor Hawkins disclose a
processing computer receiving a series of communications. App. Br. 9
(emphasis original).
Appeal 2009-007743
Application 08/976,159

9
We have reviewed the Answer but do not find that the limitation, “a
processing computer ... configured to: i. receive a series of communications
...” (claim 31), has been addressed. Accordingly, we do not find that a prima
facie case of obviousness has been established in the first instance for the
subject matter of claim 31, as a whole, and claim 32 that depends therefrom.

The rejection of claims 14-17, 19, and 20 under 35 U.S.C. §103(a) as being
unpatentable over DTC and Lupien.
The Appellants argue that there is no suggestion to combine DTC and
Lupien. App. Br. 9. This is not a persuasive argument because the
Examiner did articulate a reason for combining the references. See Answer
9. “In so doing would provide the capability to quickly and efficiently
execute and matching trading transactions.” The Examiner’s reasoning for
combining the references to reach the claimed invention has not been
disputed.
The Appellants also argue that DTC and Lupien involve systems for
handling different types of transactions. Answer 9. This is not a persuasive
argument because
[w]hen a work is available in one field of endeavor,
design incentives and other market forces can prompt
variations of it, either in the same field or a different one.
If a person of ordinary skill can implement a predictable
variation§ 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one
device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the
same way, using the technique is obvious unless its
actual application is beyond his or her skill.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Appeal 2009-007743
Application 08/976,159

10
The Appellants otherwise rely on the arguments used to challenge the
rejection of claim 1. App. Br. 9. For the foregoing reasons, we find those
arguments unpersuasive.
We have considered the Appellants’ arguments but do not find that
they show the prima facie of obviousness of claims 14-17, 19, and 20 was
established in error.

The rejection of claim 18 under 35 U.S.C. §103(a) as being unpatentable
over DTC, Lupien, and Hawkins.
The Appellants rely on the arguments used to challenge the rejection
of claim 14, on which claim 18 depends. App. Br. 10. For the foregoing
reasons, we find those arguments unpersuasive.
We have considered the Appellants’ arguments but do not find that
they show the prima facie of obviousness of claim 18 was established in
error.

CONCLUSIONS
The rejections of claims 1-9, 12, 13, and 21-30 and 33-36 under 35
U.S.C. §103(a) as being unpatentable over DTC and Hawkins; claims 14-17,
19, and 20 under 35 U.S.C. §103(a) as being unpatentable over DTC and
Lupien; and claim 18 under 35 U.S.C. §103(a) as being unpatentable over
DTC, Lupien, and Hawkins, are affirmed.
The rejection of claims 31 and 32 under 35 U.S.C. §103(a) as being
unpatentable over DTC and Hawkins is reversed.

Appeal 2009-007743
Application 08/976,159

11
DECISION
The decision of the Examiner to reject claims 1-9 and 12-36 is
affirmed-in-part.

AFFIRMED-IN-PART

mev

SCHIFF HARDIN, LLP
PATENT DEPARTMENT
233 S. WACKER DRIVE-SUITE 6600
CHICAGO IL 60606-6473