Ex Parte Crosthwaite et alDownload PDFPatent Trial and Appeal BoardJun 23, 201611189262 (P.T.A.B. Jun. 23, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111189,262 0712512005 63710 7590 06/27/2016 INNOVATION DIVISION CANTOR FITZGERALD, L.P. 110 EAST 59TH STREET (6TH FLOOR) NEW YORK, NY 10022 FIRST NAMED INVENTOR Dominic Crosthwaite 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-HSXOOlCIP 3703 EXAMINER JOHNSON, GREGORY L ART UNIT PAPER NUMBER 3692 NOTIFICATION DATE DELIVERY MODE 06/27/2016 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 DOMINIC CROSTHWAITE, ALEXANDER M. COSTAKIS, and MICHAEL N. SEMEGRAN Appeal 2013-008391 1 Application 11/189,2622 Technology Center 3600 Before BIBHU R. MOHANTY, PHILIP J. HOFFMANN, and JAMES A. WORTH, Administrative Patent Judges. WORTH, Administrative Patent Judge. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1, 6, 7, 9-12, 19, 22-25, 27, and 30-40. We have jurisdiction under 35 U.S.C. §§ 134 and 6(b). We AFFIRM. 1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed Nov. 30, 2012) and Reply Brief ("Reply Br.," filed June 21, 2013), and the Examiner's Final Office Action ("Final Act.," mailed Nov. 23, 2010) and Answer ("Ans.," mailed April 25, 2013). 2 According to Appellants, the real party in interest is CFPH, LLC (Appeal Br. 2). Appeal2013-008391 Application 11/189,262 Introduction Appellants' disclosure relates to a computerized method and system for transacting with a trading application from a short message service ("SMS"). Spec. 3. Claims 1, 19, and 25 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A method for transacting with a trading application, compnsmg: receiving a registration message from a short message service component at an interface of at least one computing device, the registration message comprising a first short message comprising registration information that was received in a first format by the short message service component from a mobile device and converted by the short message service component into a second format readable by the at least one computing device, the registration information comprising a user identifier and a user security code, the short message service component being in communication with the user mobile device and the at least one computing device; determining by the at least one computing device a user associated with the user identifier and the user security code by processing stored account information of the user; based on the act of detennining the user, transmitting by the at least one computing device verification information in the second format to the short message service component so that the short message service component converts the verification information into the first format and transmits the verification information in the first format to the mobile device; receiving a first order message from a short message service component at the interface, the first order message compnsmg a second short message compnsmg order information that was received in the first format by the short message service component from a mobile device and converted 2 Appeal2013-008391 Application 11/189,262 by the short message service component into the second format, the order information comprising a buy or sell order for a first number of shares of an instrument at a market price, the instrument representing an entertainment entity comprising at least one of a movie, a television program, an entertainment event, an actor and an actress; computing by the at least one computing device a buy-sell imbalance between buy orders and sell orders for the instrument; retrieving by the at least one computing device a security price threshold; comparing by the at least one computing device the security price threshold to the buy-sell imbalance; retrieving by the at least one computing device a security price increment representing a price movement for the instrument; setting by the at least one computing device a projected price movement to the security price increment based on a determination that the buy-sell imbalance exceeds the security price threshold; setting by the at least one computing device a market price for the instrument by incrementing a previous market price by the projected price movement; processing by the at least one computing device the order information; transmitting from the at least one computing device order processing infonnation to the short message service component in a third short message comprising the order processing information; and charging to an account of the user a fee for placing an order using short message communication, in which the act of charging the fee is based on a determination that the second short message contained an order placed by the user. 3 Appeal2013-008391 Application 11/189,262 Prior Art Relied on by the Examiner The Examiner relies upon the following as evidence of unpatentability: Mendiola Abernethy Keiser Bartter Madams US 2002/0032641 Al US 2003/0101128 Al US 2003/0171980 Al US 2004/0088244 Al US 2006/0123092 Al Rejections on Appeal Mar. 14, 2002 May 29, 2003 Sept. 11, 2003 May 6, 2004 June 8, 2006 The Examiner maintains, and the Appellants appeal, the following rejections: 1. Claims 1, 9, 11, 12, 19, 22-25, 27, 32, and 34--40 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Keiser, Mendiola, Madams, and Bartter. 2. Claims 6, 7, 10, 30, 31, and 33 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Keiser, Mendiola, Madams, Bartter, and Abernethy. ANALYSIS Independent claim 1 and dependent claims 6, 7, 9-12, and 36--38 Appellants argue that the Bartter fails to disclose "charging to an account of the user a fee for placing an order using short message communication," as required by independent claim 1 (Appeal Br. 11-12). Appellants make two arguments with respect to this limitation. 4 Appeal2013-008391 Application 11/189,262 First, Appellants argue that Bartter fails to disclose "placing an order using short message communication" (id.). The Examiner (Ans. 5-7) instead relies on the Abstract and paragraphs 10, 16, 20, and 133 of Mendiola for the placement of trading orders using SMS (short messaging) on phones. Indeed, Mendiola (i-f 133) discloses that a user may place a single bid to purchase an item in an auction, and Mendiola proceeds to disclose a method whereby a user may be informed by SMS if the user has been outbid (i-f 137), and the user may place a follow-up bid using a reply SMS communication (i-f 139). Second, Appellants argue that Bartter fails to disclose "charging to an account of the user a fee for placing an order" (Appeal Br. 10-11) because Bartter charges based on the content of a message rather than based on the placement of an order. However, one cannot show non-obviousness by attacking references individually when the rejection is based on a combination of references. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Bartter discloses a system that charges for sending sports information or stock updates in an SMS message. See Final Act. 9 (citing Bartter (Abstr., i1i145, 54--58, 61, 65, Figs. 4--6)); Ans. 4; see also Bartter i138. Mendiola discloses the placement of a bid using SMS (see supra). The Examiner reasons, inter alia, that it would have been obvious to a person of ordinary skill to modify the teaching in Bartter of charging for placement of bids using SMS messaging, rather than based on the content of the SMS message, 5 Appeal2013-008391 Application 11/189,262 in order for an e-commerce system to be flexible in charging for the service being provided (Final Act. 9). We agree with the Examiner that it would have been obvious for a person of ordinary skill to charge for the use of an SMS messaging service, as taught by Bartter, for different commercial purposes, including the placement of bids for auction, as taught by Mendiola, for the reasons stated by the Examiner (see Final Act. 9). Although raised with respect to dependent claims 39 and 40, Appellants make an argument that is applicable to independent claim 1 (see Appeal Br. 14; Reply Br. 1). To wit, Bartter charges for messages sent to the user, whereas the recited limitation is based on messages sent by the user (when the user placing as order). However, the aforementioned reasoning of the Examiner applies to the use of e-commerce for both kinds of messages, to and from the Examiner. A person of ordinary skill would understand that one may wish to charge for services provided, and would apply Bartter's teaching of charging for messaging to the messaging service of Mendiola for similar reasons. Appellants argue that the Examiner failed to provide any evidence or reason why one of ordinary skill in the art would specifically choose to combine the specific teachings of Keiser with those of Mendiola, Madams, and Bartter (Appeal Br. 13). Appellants assert that the Examiner's reasoning is conclusory and that the combination of multiple references is nonobvious (id.). We are unpersuaded by Appellants' argument in this regard. Keiser is relied on by the Examiner for a computer-implemented financial management system that permits the trading of securities via a network (see 6 Appeal2013-008391 Application 11/189,262 Final Act. 5). Madams is relied on by the Examiner for the disclosure of messaging from a cell phone using a proxy server (see Final Act. 7). We conclude that it would have been obvious for a person of ordinary skill to use the computer technology described in Keiser and Madams to implement an e-commerce system based on SMS messaging. See KSR v. Teleflex, 550 U.S. 398, 417 (2007) ("a court must ask whether the improvement is more than the predictable use of prior art elements according to their established functions.") Thus, we agree with the Examiner's reasoning (see Final Act. 9; Ans. 4--7). Appellants do not argue the patentability of claims 6, 7, 9-12, and 36- 38 separately from independent claim 1, from which they each respectively depend. We sustain the Examiner's rejection under 35 U.S.C. § 103(a) of claims 6, 7, 9-12, and 3 6-3 8, for similar reasons as for independent claim 1. Independent claims 19 and 25 and dependent claims 22-24, 27, and 30--35 Appellants do not argue the patentability of independent claims 19 and 25 separately from independent claim 1. We sustain the Examiner's rejection under 35 U.S.C. § 103(a) of independent claims 19 and 25, for similar reasons as for independent claim 1. Appellants do not argue the patentability of claims 22-24, 27, and 30- 35, separately from independent claims 19 and 25, from which they each respectively depend. We sustain the Examiner's rejection under 35 U.S.C. § 103(a) of claims 22-24, 27, and 30-35, for the same reasons as for independent claims 19 and 25. 7 Appeal2013-008391 Application 11/189,262 Dependent claims 39 and 40 Appellants argue that the prior art relied upon by the Examiner does not disclose "based on the determination that the second short message contains at least one word associated with an order instruction, charging a fee to the account of the user," as recited in dependent claims 39 and 40 (Appeal Br. 14--15). First, Appellants argue that Madam fails to disclose "charging a fee to the account of the user" (Appeal Br. 9). However, the Examiner instead relies on Bartter' s disclosure of charging a user a fee, discussed above with respect to independent claim 1 (Ans. 9). The Examiner reasons that charging an account is inherent in charging a user a fee (id.). We agree with the Examiner's reasoning, both as a matter of reading Bartter, and also because we determine that charging a user a fee is within the broadest reasonable construction of the limitation "charging a fee to the account of the user." Second, Appellants argue that Keiser and Mendiola fail to disclose a determination based on "at least one word" of the text of a message, as required by the same limitation. Instead, the Examiner correctly relies on the description in Madams (Abstr., i-f 40) of a messaging system that may parse the words in a message to sell a security or place an order to teach this element (Final Act. 14--15). The remainder of Appellants arguments with respect to claim 39 and 40 are similar to those addressed above with respect to independent claim 1, and we are unpersuaded for similar reasons. We, therefore, sustain the Examiner's rejection under 35 U.S.C. § 103(a) of claims 39 and 40. 8 Appeal2013-008391 Application 11/189,262 DECISION The decision of the Examiner to reject claims 1, 6, 7, 9-12, 19, 22-25, 27, and 30-40 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)(l )(iv). AFFIRMED 9 Copy with citationCopy as parenthetical citation