Ex Parte Buist

Board of Patent Appeals and Interferences

Dec 29, 2008

10666817 (B.P.A.I. Dec. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte WALTER D. BUIST
____________

Appeal 2008-4102
Application 10/666,817
Technology Center 3600
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Decided: December 29, 2008
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Before, HUBERT C. LORIN ANTON W. FETTING and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1-24. We have jurisdiction under 35 U.S.C. § 6(b). (2002).
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SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
Appellant claims use of a Financial Information Exchange (FIX) Protocol to
communicate a coded message having a meaning outside the publicly-known
meaning within the protocol. (Specification 2:[¶0008])
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method for securely communicating financial information,
comprising:
receiving over an electronic computer network a message
communicated
according to a field delimited communication protocol pursuant to which
the message comprises a financial data field and a field value
corresponding to the financial data field and the message has a standard,
publicly-known meaning within the field delimited communication
protocol;
and interpreting said message according to a coded meaning defined
to be different than the standard, publicly-known meaning within the field
delimited communication protocol.

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THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Hausman US 2004/0030632 A1 Feb. 12, 2004

The following rejection is before us for review.
1. The Examiner rejected claims 1-24 under 35 U.S.C. 102(e) as being
anticipated by Hausman.
ISSUE
Has Appellant shown that the Examiner erred in rejecting claims 1-24 on
appeal under 35 U.S.C. § 102 (e) as anticipated by Hausman on the grounds that
the system in Hausman is capable of allowing a message to have a coded meaning
different than the standard, publicly-known meaning within the field delimited
communication protocol.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. Claim 1 does not require the use of a device to interpret a FIX formatted
message.
2. The Specification describes several examples in ¶¶ [0031-0033] in which
interpreting a message according to a coded meaning defined to be different than
the standard, publicly-known meaning is accomplished by human intervention. In
each example, the Specification states that buyers B/C/D “…would not interpret
the message as an order for….” a value according to the FIX meaning, but as an
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order for value after translated according to a coded meaning. (Specification 5: ¶¶
[0031-0033].) Thus the persons B/C/D are interpreters.
3. The Examiner found that
… Hausman teaches a method for securely
communicating (transmitting) financial information
(financial interest), comprising receiving over an
electronic computer network (network, 100) a message
communicated according to a field delimited
communication protocol (FIX) pursuant to which the
message comprises a financial data field (financial
interest) and a field value (price parameter)
corresponding to the financial data field and the message
has a standard, publicly-known meaning within the field
delimited communication protocol….
(Final Rej. 2, Answer, 3)
4. Hausman discloses the use of field delimited communication protocol
having standard, publicly-known meaning such that:
…terms are formatted according to a protocol, as for
example the FINANCIAL INFORMATION
EXCHANGE PROTOCOL (FIX) described in a
document entitled FINANCIAL INFORMATION
EXCHANGE PROTOCOL (FIX), Version 4.2 with
Errata 20010501, published May 1, 2001, by FIX
Protocol Limited; or the TICKET ORDER FEED
PROTOCOL. (Hausman, [0041])
5. It is our understanding that a human mind is capable of following a mental
algorithm, such as multiply all order values by 10.
6.Hausman discloses
The user can then designate the nature of the
operand to be used in determining the price term for his
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trading proposal by entering data in either one of fields
352, 353. By entering a price step in field 352, the trader
can designate that he/she wishes the price term for his
proposal to be set at a constant stated offset from the
reference yen price, so that as the reference yen price
rises and/or falls, the price term for the trader's proposal
rises and/or falls at a constant offset. By entering a ratio
in field 353, the trader can designate that the price term
for the proposal will float with the reference yen price by
the stated ratio. For example, were a trader to enter "30"
in field 352, the price term for his proposal would float at
a constant "30" dollar level above the reference yen price.
Were the trader to enter "1.50" in field 353, the price
term would float at a constant 150% of the reference yen
price. (Hausman, [¶0075])
7.Hausman discloses the situation where an order entered in one currency
trades in a different currency. (Hausman, [¶0058])

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631,
2 USPQ2d 1051, 1053 (Fed. Cir. 1987), cert. denied, 484 U.S. 827 (1987).
Analysis of whether a claim is patentable over the prior art under 35 U.S.C. § 102
begins with a determination of the scope of the claim. We determine the scope of
the claims in patent applications not solely on the basis of the claim language,
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but upon giving claims their broadest reasonable construction in light of the
specification as it would be interpreted by one of ordinary skill in the art. In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed.
Cir. 2004). The properly interpreted claim must then be compared with the prior
art.
“It is well settled that a prior art reference may anticipate when the claim
limitations not expressly found in that reference are nonetheless inherent in it.
Under the principles of inherency, if the prior art necessarily functions in
accordance with, or includes, the claimed limitations, it anticipates.” In re
Cruciferous Sprout Litig., 301 F.3d 1343, 1349 (Fed. Cir. 2002) (citations and
internal quotation marks omitted).
The Board may find in the prior art a feature which is capable of performing
a function recited in the claims. “The Board's finding that the scaled-up version of
figure 5 of Harz would be capable of performing all of the functions recited in
Schreiber's claim 1 is a factual finding, which …[otherwise] …must be shown to
be clearly erroneous…” In re Schreiber, 128 F.3d 1473, 1479 (Fed. Cir. 1973).
ANALYSIS
Claims 1-21
Appellant argues claims 1-21 as a group1. We select claim 1 as the
representative claim for this group, and the remaining claims 2-21 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).

1 A statement which merely points out what a claim recites will not be considered
an argument for separate patentability of the claim. See, 37 C.F.R. § 41.37
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It is undisputed that Hausman discloses all the limitations of claim 1 up to
the interpreting step. (Appeal Br. 13.) What is disputed by Appellant is whether
Hausman teaches, discloses, or suggests interpreting the FIX formatted
“…message according to a coded meaning defined to be different than the
standard, publicly-known meaning within the field delimited communication
protocol.…” (Appeal Br. 13.)
Appellant argues that the Examiner is espousing that limitations in the
claims “…should be ignored and read out of the claims because the step of
interpreting a message according to a coded meaning is purportedly performed by
a human, and patentability cannot be predicated by a “mental step.’”
(Reply Br. 3, 4.) We agree with Appellant that the step of interpreting a message
according to a coded meaning cannot be ignored in claim 1. Rather, in construing
claim language, we consider all words of a claim in judging patentability of the
claim against the prior art, but do so with an eye as to whether the prior art is
capable of performing a function recited in the claims. See, In re Schreiber, at
1479.
Preliminarily, we find that claim 1 does not require a machine to interpret
the FIX formatted messages (FF 1). Appellant also admits that “[c]laim 1 does not
require the interpretation step to be performed by a computer.” (Reply Br. 6.)
Thus, the recited interpreting step of the method claims can be accomplished by
human analysis to meet the claim limitation. Since the system in Hausman
communicates to a recipient values such as "30" for the price term in field 352 in a

(c)(1)(vii) (2004)
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proposal, the recipient is fully capable of interpreting this value as thirty-its
standard, publicly-known meaning. Alternatively, the recipient may interpret the
value to mean three hundred “30”x10- differently from a publicly-known meaning,
depending on the understanding the recipient has with the trader (FF 5). Hausman
in particular describes the situation where an order in one currency trades in a
different currency, in which case data entered would nominally have a standard
meaning of one currency but would be interpreted for trading as the other currency
(FF 7). Accordingly, we are not persuaded of error in the rejection.
Claims 22 and 23
Appellant argues that claims 22 and 23 require a device to conduct the
recited interpreting and encoding functions, and thus cannot be anticipated by a
mental step of a human. (Reply Br. 4, 5.) We agree with Appellant that claims 22
and 23 are apparatus claims and the prior art must show a device performing or
capable of performing the recited function in order to meet the claim limitations.
See, In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). Claim 22 recites an
interpreter for interpreting a message so as to have a meaning different from a
standard, publicly known meaning, and claim 23 recites an encoder for encoding a
message field (Reply Br. 4, 5). We find that Hausman discloses an interpreter in
the form of a currency translator device which interprets the desired value of
money an orderer wishes to spend in one currency and translates that value into
another country’s currency (FF 6). The currency translator device in Hausman also
includes an encoder which encodes a value entered as either a percentage or float
to translate the same value into foreign currency (FF 6).
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Appellant next argues that the claimed translator/encoder devices are further
required by the claims to interpret/encode messages intended to have a meaning
different from the standard, publicly-known meaning. (Reply Br. 5, 6.) We
disagree with Appellant. Appellant uses functional language in each of claims 22
and 23 to describe the respective functions of the interpreter and the encoder. As
functional language, we are required to give this language weight to the extent that
the prior art is or is not capable of meeting the limitation. See, In re Schreiber
at1477-78. (Fed. Cir. 1997). The currency translator apparatus in Hausman
performs automatic calculations (FF 6) and is thus capable of being programmed to
encode and interpret the values which it messages, e.g., multiply every value
entered by 10 (encode) and divide the received value by 10 (interpret). We
therefore are not persuaded as to error in the rejection of claims 22 and 23.

CONCLUSIONS OF LAW
We conclude the Appellant has not shown that the Examiner erred in
rejecting claims 1-24 under 35 U.S.C. § 102(3) as anticipated by Hausman.

DECISION
The decision of the Examiner to reject claims 1-24 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).
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AFFIRMED

LV:

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