Ex Parte Edelstein et al

Board of Patent Appeals and Interferences

Dec 22, 2009

09504803 (B.P.A.I. Dec. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte P. HOWARD EDELSTEIN,
CHRISTOPHER J. WALSH,
CHRISTOPHER G. SMITH,
GARY S. FOSTER, and
PETER J. TIERNEY
____________

Appeal 2009-004927
Application 09/504,803
Technology Center 3600
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Decided: December 22, 2009
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Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-004927
Application 09/504,803

2
STATEMENT OF THE CASE
P. Howard Edelstein, et al. (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1-8, 10-30, and 32-56. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
The invention relates to a method and system for “facilitating the
processing and settlement of securities trades.” Specification 1:2-3.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system for facilitating the processing and management of a
securities trade comprising:
a computer;
trade execution information supplied by a first trading party and
received by said computer, said trade execution information indicative
of an executed trade by the first trading party and comprising party
supplied data elements concerning conditions of the executed trade
itself;
trade allocation information supplied by a second trading party and
received by said computer, said trade allocation information indicative
of an ordered trade by the second trading party and comprising party

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Apr. 28, 2008) and the Examiner’s Answer (“Answer,” mailed Aug.
11, 2008).
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supplied data elements concerning conditions of the ordered trade
itself;
a set of predefined acceptable trade details; and
software executing on said computer for comparing the party supplied
data elements contained in said trade execution information with the
party supplied data elements contained in said trade allocation
information, and for determining that a match exists if the party
supplied data elements contained in said trade execution information
and the party supplied data elements contained in said trade allocation
information correlate within said set of predefined acceptable trade
details.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Nelson
Hammons
US 4,823,265
US 6,477,509 B1
Apr. 18, 1989
Nov. 5, 2002
The following rejection is before us for review:
1. Claims 1-8, 10-30, and 32-56 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Nelson and Hammons.

ISSUES
Have the Appellants shown error in the rejection?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer (Ans.
3-7) and Non-Final Office Action mailed Feb. 11, 2008 ( pages 2-6).

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PRINCIPLES OF LAW
Obviousness
Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are
such that the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordinary skill in
the art to which said subject matter pertains.’
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
The Appeal Brief treats only the rejection of claim 1 with any
substance.
The Appellants argue that claim 1 “requires that two specific types of
data sets are compared and a match is determined to exist if the data sets
correlate with certain specified parameters.” Br. 11. The Appellants argue
that neither Nelson nor Hammons disclose, teach or suggest this
requirement. Br. 11. This is not a persuasive argument as to error in the
rejection of claim 1.
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The Appellants do not give an accurate characterization of the claimed
subject matter. Claim 1 is directed to an apparatus comprising a computer,
three pieces of information (trade execution information supplied by a first
trading party, trade allocation information supplied by a second party, and “a
set of predefined acceptable trade details”), and software for comparing
party supplied data elements in the trade execution and trade allocation
information and determining a match if the party supplied data elements
“correlate within said set of predefined acceptable trade details.” According
to the Specification, the criteria for specifying “a set of predefined
acceptable trade details” may involve any particular information, including a
numerical value. Specification 11:15-22 and 12:2-5. Therefore, even an
indication that a trade is acceptable could be considered “a set of predefined
acceptable trade details.” Accordingly, when reasonably broadly construed,
claim 1 is directed to a combination of a computer and software to enable
the computer to compare two pieces of supplied information and determine a
match if they correlate to another piece of information, such as an indication
that a trade is acceptable. There is no mention of “data sets” or “certain
specified parameters” as the Appellants have characterized the claimed
subject matter as requiring.
The Appellants argue that Nelson does not disclose comparing two
sets of data with a set of acceptable trade parameters. Br. 11. In that regard,
the Examiner directed the Appellants to col. 1, ll. 48-55; col. 9, ll. 29-41;
and col. 15, ll. 41+ of Nelson. See Office Action of Feb. 11, 2008, p.3.
Answer 4. The Appellants dispute the Examiner’s characterization of what
Nelson discloses only to the extent that the Appellants find the disclosure at
col. 9, ll. 35-37 of Nelson to only “provid[e] an “exchange” where a variety
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of entities may gather, offer renewable options, view offered renewable
options, and decide to accept or reject listed offers for renewable options.”
Br. 11. The other passages, the Examiner directed the Appellants to, are not
addressed. And yet it is quite clear from reading the passage at col. 1, ll. 48-
55 that Nelson is directed to systems for matching buyers and sellers.
Reading the passage at col. 9, ll. 29-41, Nelson clearly describes an
embodiment of a computer-enabled renewable option accounting and
marketing system involving renewable options for which “institutions are
likely to set the market conditions” and which the system would “accept and
match offers to purchase, sell, and write renewable options.” As the
Examiner has argued (Answer 7-8), this disclosure suggests a system
comprising a computer and software to enable the computer to compare two
pieces of supplied information (from the buyer and seller) and determine a
match if they correlate to another piece of information (i.e., an indication
that the trade is acceptable).
To the extent that Appellants are arguing that the particular
information processed by the claimed system is different from that of
Nelson’s system, the difference is one based on descriptive material.
Patentable weight need not be given to descriptive material absent a
new and unobvious functional relationship between the descriptive material
and the substrate (here the display). See In re Lowry, 32 F.3d 1579, 1582-83
(Fed. Cir. 1994). In re Ngai, 367 F.3d 1336, 1338. See also, Ex parte
Mathias, 191 Fed. Appx. 959 (CCPA 2006)(informative)(Rule 36)
(nonfunctional descriptive material). In that regard, the Appellants have not
come forward with evidence sufficient to show that the structure of the
computer or software is functionally affected by it using trade execution
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information supplied by a first trading party, trade allocation information
supplied by a second party, and “a set of predefined acceptable trade details”
to perform a match in contrast to the offers to purchase, sell, and write
renewable options that the Nelson system uses. Absent such evidence, it is
reasonable to conclude that use of trade execution information supplied by a
first trading party, trade allocation information supplied by a second party,
and “a set of predefined acceptable trade details” are descriptive and not
functionally related to any structure of the claimed system and as such falls
under the category of patentably inconsequential subject matter. See Ex
parte Curry, 84 USPQ2d 1272, 1275 (BPAI 2005) (informative) (“Common
situations involving nonfunctional descriptive material are: - a computer-
readable storage medium that differs from the prior art solely with respect to
nonfunctional descriptive material, such as music or a literary work, encoded
on the medium, - a computer that differs from the prior art solely with
respect to nonfunctional descriptive material that cannot alter how the
machine functions (i.e., the descriptive material does not reconfigure the
computer), or - a process that differs from the prior art only with respect to
nonfunctional descriptive material that cannot alter how the process steps are
to be performed to achieve the utility of the invention.
Thus, if the prior art suggests storing a song on a disk, merely
choosing a particular song to store on the disk would be presumed to be well
within the level of ordinary skill in the art at the time the invention was
made. The difference between the prior art and the claimed invention is
simply a rearrangement of nonfunctional descriptive material.).” See also Ex
parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative).
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Accordingly, the distinction between Nelson’s system and that which
is claimed on the basis of the content of the information being processed is a
distinction based on 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).
The Appellants also take issue with Hammons for not disclosing the
instantly claimed comparing and “acceptable trade parameters”. Br. 12. But
the Examiner did not rely on Hammons as evidence that the prior art
discloses these features. Nelson was relied upon. See Answer 4 and 8.
Finally, the Appellants argue that one would not combine Nelson and
Hammons because “both references are concerned with solving different
completely different problems than the claimed invention.” Br. 12. The
Appellants do not further explain what that difference is. Nevertheless,
“[t]he question is not whether the combination was obvious to the patentee
but whether the combination was obvious to a person with ordinary skill in
the art. Under the correct analysis, any need or problem known in the field
of endeavor at the time of invention and addressed by the patent can provide
a reason for combining the elements in the manner claimed.” KSR, 550 U.S.
at 420.
For the foregoing reasons, we find the Appellants’ arguments
challenging the rejection of claim 1 unpersuasive as to error in its rejection
under §103 over Nelson and Hammons.
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The Appellants challenge the rejection of the other claims in the same
way; that is, to merely recite what the claims require and then generally
making the remark that the Examiner has not provided any rationale. See
e.g., the treatment of the rejection of claim 2 (Br. 13: “The Examiner has
provided no rationale for believing that the cited references disclose, teach
or suggest these limitations, but merely cites a generic portion of Nelson.
However, even after carefully reviewing the cited portion of Nelson,
Appellant can not conceive of how the Examiner interprets Nelson to
disclose the claimed limitations.”). In point of fact, it is plainly evident that
the Examiner has made a concerted effort to not only cite where in the cited
references all the limitations in all the claims are disclosed, with column and
line number, but to explain what Nelson does and does not disclose vis-a-vis
the claimed subject matter and why Hammons is relied upon, including an
apparent reasoning with logical underpinning for the legal conclusion of
obviousness of the claimed subject matter given the combined disclosures of
Nelson and Hammons. See Non-Final Office Action of Feb. 11, 2008, pp. 3-
4 and Answer 4. Each claim is addressed and the Examiner points
Appellants not to generic portions but to specific passages in the prior art
where the Examiner finds the claim limitations to be disclosed. For example,
as to the subject matter of claim 2, the Examiner pointed the Appellants to
col. 1, ll. 60-66 and col. 4, ll. 21+. Yet, the Appellants have not explained
why the Examiner’s characterization of those passages is incorrect and
would not meet the limitations of claim 2. Reading the Brief, it does not
appear the Appellants have examined any of the passages the Examiner has
cited to determine the correctness of the Examiner’s factual findings. “It is
not the function of this court to examine the claims in greater detail than
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argued by an appellant, looking for nonobvious distinctions over the prior
art.” In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991). See
also In re Wiseman, 596 F.2d 1019, 1022 (CCPA 1979) (arguments must
first be presented to the board). The Appellants’ perfunctory criticism of the
Examiner’s position has not given the Board a satisfactory reason to
question the correctness of the Examiner’s factual findings. Appellants’
argument that, e.g., the Examiner “has provided no rationale for believing
that the cited references disclose, teach or suggest these limitations, but
merely cites a generic portion of Nelson”(Br. 13) is insufficient to be
considered persuasive as to error in the rejection of claims 2-8, 10-30, and
32-56. Cf. Ex parte Belinne, 2009 WL 2477843, (BPAI 2009) (informative)
(http://www.uspto.gov/ip/boards/bpai/decisions/inform/fd09004693.pdf)
(“Appellants’ argument, as detailed supra, repeatedly restates elements of
the claim language and simply argues that the elements are missing from the
reference. However, Appellants do not present any arguments to explain
why the Examiner’s explicit fact finding is in error. Arguments not
presented in the Appeal Brief “will be refused consideration by the Board,
unless good cause is shown” (i.e., are waived).” App.Br. 7, citing 37 C.F.R.
§ 41.37 (c)(l)(vii) (A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim.).
For the foregoing reasons, we find the Appellants’ arguments
challenging the rejection of claims 2-8, 10-30, and 32-56 unpersuasive as to
error in their rejection under §103 over Nelson and Hammons.

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CONCLUSIONS
We conclude that the Appellants have not shown that the Examiner
erred in rejecting claims 1-8, 10-30, and 32-56 under 35 U.S.C. §103(a) as
being unpatentable over Nelson and Hammons.

DECISION
The decision of the Examiner to reject claims 1-8, 10-30, and 32-56 is
affirmed.

AFFIRMED

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