Ex Parte Claus et al

Patent Trial and Appeal Board

Feb 9, 2016

12953818 (P.T.A.B. Feb. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/953,818 11/24/2010
63710 7590 02/11/2016
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Matthew W. Claus
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.
05-6278-C2 4195
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
02/11/2016 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):
patentdocketing@cantor.com
lkorovich@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW W. CLAUS, JAMES R. DRISCOLL,
GREGORY P. MANNING, and JOSEPH C. NOVIELLO
Appeal2014-002417 1
Application 12/953,8182
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 60-75 and 77-85. We have jurisdiction under 35 U.S.C.
§ 6(b). An oral hearing was held on January 28, 2016.
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
August 5, 2013) and Reply Brief ("Reply Br.," filed December 10, 2013),
and the Examiner's Answer ("Ans.," mailed October 10, 2013) and Final
Office Action ("Final Act.," mailed June 19, 2012). The record includes a
transcript of the oral hearing held January 28, 2016.
2 Appellants identify BGC Partners, Inc. as the real party in interest. App.
Br. 2.
Appeal2014-002417
Application 12/953,818
CLAIMED INVENTION
Appellants' claimed invention "relates generally to electronic trading
and more specifically to a system and method for generating and displaying
composite values and receiving and executing composite trading orders"
(Spec. 1, 11. 6-8).
Claim 72, reproduced below, is illustrative of the subject matter on
appeal:
72. An apparatus comprising:
a processor; and
a memory, in which the memory stores instructions
which, when executed by the processor, direct the processor to
perform:
determining that a plurality of different trading
products are related to but different from a first trading
product, in which a quantity of the first trading product is
determined to be substantially equivalent to a quantity of
each of the plurality of different trading products;
receiving market data from at least one market
center, in \'l1hich the market data relates to the first trading
product and the plurality of different trading products;
determining, based at least in part on the market
data, a composite value for the first trading product and
the plurality of different trading products;
generating, based on the composite value, a
composite trading order;
determining, via a processor, based on the
composite trading order, at least one constituent trading
order that is configured to satisfy at least a portion of the
composite trading order, and
transmitting, on behalf of the trader, the at least
one constituent trading order to the at least one market
center.
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Application 12/953,818
REJECTIONS
Claims 60-75 and 77-85 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to particularly point out and distinctly
claim the subject matter that Appellants regard as the invention.
Claims 60, 61, 63-73, 75, and 77-85 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Romani (US 7,469,229 B2, iss. Dec. 23,
2008).
Claims 62 and 74 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Romani and Official Notice.
Claims 60-75 and 77-85 are rejected on the ground of nonstatutory
obviousness-type double patenting as unpatentable over claims 1-180 of
Claus '565 (US 7,873,565 B2, iss. Jan. 8, 2011), claims 1-127 of Claus '644
(US 7,711,644 B2, iss. May 4, 2010), claims 1-124 of Claus '640
(US 7,711,640 B2, iss. May 4, 2010), and claims 1-66 of Claus '056
(US 7,921,056 B2, iss. Apr. 5, 2011).
Claims 60-75 and 77-85 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as unpatentable over
claims 60-72 of co-pending application Serial No. 12/953,838.
ANALYSIS
Indefiniteness
In rejecting claims 60-75 and 77-85 under 35 U.S.C. § 112, second
paragraph, the Examiner finds that the claims are indefinite because:
[i]n claim 60, line 4 (and elsewhere, where applicable),
Examiner is unclear about the scope of the term "substantially"
in substantially equivalent. It is not clear to the Examiner when
the quantity of the first trading product is substantially
equivalent to the quantity of the plurality of trading products.
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Application 12/953,818
Final Act. 2. See also Ans. 2 ("Examiner notes that the use of the term
"substantially" as in substantially equivalent does not clarify the scope of the
claim. Does substantially equivalent differ in scope from simply
equivalent.").
The Examiner's objection to the term "substantially" appears based on
the Examiner's perception that the use of that term per se renders the claim
indefinite. It does not.
"Expressions such as 'substantially' are used in patent documents
when warranted by the nature of the invention, in order to accommodate the
minor variations that may be appropriate to secure the invention" and,
indeed, "may be necessary in order to provide the inventor with the benefit
of his invention." Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120
(Fed. Cir. 2002). Thus, "[i]t is well established that when the term
'substantially' serves reasonably to describe the subject matter so that its
scope would be understood by persons in the field of the invention ... , it is
not indefinite." Id.
The Examiner summarily concludes here that use of the term
"substantially" in independent claim 60 "and elsewhere, where appropriate,"
renders the claims indefinite. But the Examiner does not explain why a
person of ordinary skill in the art would not understand the metes and
bounds of the claim in light of the Specification.
The Examiner has not established a prima facie case of indefiniteness.
Therefore, we do not sustain the Examiner's rejection of claims 60-75 and
77-85 under 35 U.S.C. § 112, second paragraph.
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Application 12/953,818
Obviousness
Independent claim 72 and dependent claims 73, 75, and 77--83
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 72 under 35 U.S.C. § 103(a) because Romani
does not disclose or suggest "determining that a plurality of different trading
products are related to but different from a first trading product, in which a
quantity of the first trading product is determined to be substantially
equivalent to a quantity of each of the plurality of different trading
products," as recited in claim 72 (App. Br. 10-13).
The Examiner directs our attention to claim 1 of Romani and asserts
that the argued limitation is disclosed by:
claim 1, combination order for different instruments with a bid
price serves as plurality of trading products; ask price of a
combination order serves as first trading product; both these
orders are related (combination order) but different (buy vs.
sell).
Final Act. 3, 6. However, as Appellants observe, the "plurality of different
trading products" and the "first trading product," as called for in claim 72,
are "actual products (e.g., instruments) for trading" as distinguished from "a
price of [a] trading product, a quantity of the trading product, and orders to
buy or sell the trading product" (App. Br. 13). An "ask price of a
combination order" cannot constitute a "first trading product" at least
because an "ask price" is not a "trading product." Nor, for the same reason,
can a "bid price" be a "plurality of different trading products."
Moreover if, as Appellants suggest, the Examiner takes the position
that the "first trading product" and the "plurality of different trading
products" comprise different legs of a combination order, Romani' s claim 1
does not disclose or suggest that a quantity of one leg of a combination order
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Application 12/953,818
is "substantially equivalent to" a quantity of another leg of the combination
order, i.e., that "a quantity of the first trading product is ... substantially
equivalent to a quantity of each of the plurality of different trading
products," as recited in claim 72.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claim 72 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner's rejection of claims 73, 75, and 77-83,
which depend from claim 72. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed.
Cir. 1992) ("dependent claims are nonobvious if the independent claims
from which they depend are nonobvious").
Independent claims 1and84 and dependent claims 61and63-71
Independent claims 1 and 84 include language substantially similar to
the language of claim 72, and are rejected based on the same rationale
applied with respect to claim 72. Therefore, we do not sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of independent claims 1 and
84, and claims 61 and 63-71, which depend from claim 1, for the same
reasons set forth above with respect to claim 72.
Double Patenting
In rejecting claims 60-75 and 77-85 as unpatentable over the claims
of Claus '565, Claus '644, Claus '640, and Claus '056, the Examiner asserts:
Claims 60-75 and 77-85 are rejected on the ground of
nonstatutory obviousness-type double patenting as being
unpatentable over claims 1-180 of U.S. Patent No. 7,873,565
["Claus '565"], claims 1-127 of U.S. Patent No. 7,711,644
["Claus '644"], claims 1-124 of U.S. Patent No. 7,711,640
["Claus '640,"] and claims 1---66 of U.S. Patent No. 7,921,056
["Claus '565"]. Although the conflicting claims are not
identical, they are not patentably distinct from each other
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Application 12/953,818
because the claims are directed towards a method for generating
a constituent trading order from a plurality of orders which are
of different type than the first trading order such that the
quantity of the constituent trading order is equivalent to the
quantity of the first trading order.
Final Act. 8. But the Examiner does not present any comparison of the
pending claims with those of the identified patents.
In accordance with section 804 of the Manual of Patent Examining
Procedure (the "MPEP"), in making a double patenting rejection of the type
involved here, the Examiner must determine whether any claim in the
present application defines an invention that is merely an obvious variation
of an invention claimed in the identified patents. Moreover, the analysis
employed in making the obviousness-type double patenting rejection must
parallel that used in the guidelines for analysis of a 35 U.S.C. § 103
obviousness determination.
Here, the Examiner has not identified any specific differences
between any claim of the present application and a claim of any of
Claus '565, Claus '644, Claus '640, and Claus '056, or provided reasons
why any such differences would have been obvious to a person of ordinary
skill in the art at the time of Appellants' invention. Instead, the Examiner
merely asserts that the claims of the present application are not patentably
distinct from the claims of the Claus patents because "the claims are directed
towards a method for generating a constituent trading order from a plurality
of orders which are of different type than the first trading order such that the
quantity of the constituent trading order is equivalent to the quantity of the
first trading order" (Final Act. 8).
On the present record, the Examiner has failed to establish a prima
facie case of obviousness-type double patenting. Therefore, we do not
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sustain the Examiner's rejection of claims 60-75 and 77-85 on that ground
as unpatentable over claims of the Claus patents.
Turning to the provisional rejection of claims 60-75 and 77-85 on the
ground of nonstatutory obviousness-type double patenting as unpatentable
over claims 60-72 of application Serial No. 12/953,838 ("the '838
application"), we note that the '838 application issued on July 23, 2013 as
U.S. Patent No. 8,494,952. An Examiner's Amendment was entered on
March 12, 2013, i.e., after the Final Office Action in the present application
was mailed, in which independent claim 60 and dependent claims 61---64, 66,
67, 71, and 72 were amended and dependent claims 65 and 68-70 were
cancelled. Because the patented claims are not the same as those originally
considered by the Examiner when the obviousness-type double patenting
rejection was made, we decline to reach this rejection. See Ex parte Monda,
95 USPQ2d 1884 (BP AI 2010) (Panels have the flexibility to reach or not
reach provisional obviousness-type double patenting rejections).
DECISION
The Examiner's rejection of claims 60-75 and 77-85 under 35 U.S.C.
§ 112, second paragraph, is reversed.
The Examiner's rejections of claims 60-75 and 77-85 under
35 U.S.C. § 103(a) are reversed.
The Examiner's rejection of claims 60-75 and 77-85 on the ground of
nonstatutory obviousness-type double patenting as unpatentable over
claims 1-180 of Claus '565, claims 1-127 of Claus '644, claims 1-124 of
Claus '640, and claims 1---66 of Claus '056 is reversed.
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Application 12/953,818
We do not reach the Examiner's provisional rejection of claims 60-75
and 77-85 on the ground of nonstatutory obviousness-type double patenting
as unpatentable over claims 60-72 of application Serial No. 12/953,838.
REVERSED
em
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