Ex Parte Gilbert et al

Patent Trial and Appeal Board

Sep 9, 2013

10171437 (P.T.A.B. Sep. 9, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ANDREW C. GILBERT (DECEASED),
MARY ANN GILBERT (LEGAL REPRESENTATIVE),
ANDREW STERGIOPOULOS (DECEASED), and
ANGELA STERGIOPOULOS (LEGAL REPRESENTATIVE)
____________________

Appeal 2011-009747
Application 10/171,437
Technology Center 3600
____________________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
JAMES A. TARTAL, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-5, 7-28, and 30-57. We have jurisdiction under
35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We AFFIRM.1

BACKGROUND
Appellants’ invention relates to systems and methods for providing
trading systems, and more particularly to trading systems that allow traders
to negotiate prices with other traders (Spec. 1, ll. 8-11).
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method comprising the steps of:
by a computer trading system, providing a general market
in which traders can submit and trade on bids and/or offers for
items of a class traded on the trading system, the general market
presenting bids and offers thereon in tradeable form to traders
in the market without regard to inside market criteria;
by computer of the trading system, selecting traders from
among the traders participating in the general market, wherein
the selected traders are selected to participate in an inside
market based on predetermined inside market criteria, the inside
market being a market including bids and offers inside the
quotes made by dealers to their customers; and
by computer of the trading system, selecting bids and/or
offers that lie inside the quotes made by dealers to their

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed March 17, 2011) and the Examiner’s Answer (“Ans.,” mailed
March 31, 2011).
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customers for presentation to the selected traders, on a
preferential basis relative to any presentation of the inside
market bids and offers to non-selected traders on the general
market.

THE REJECTIONS
The following rejections are before us for review:
Claims 41-49 and 51-55 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
Claims 1-5, 7, 10-13, 15-26, 30-32, 34-48, 50-52, and 54-57 stand
rejected under 35 U.S.C. § 102(e) as being anticipated by Huttenlocher
(US 2003/0093343 A1, pub. May 15, 2003).
Claims 8, 9, 14, 27, 28, 33, 49, and 53 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Huttenlocher in view of Mahanti
(US 2002/0052824 A1, pub. May 2, 2002).

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ANALYSIS
Indefiniteness
Appellants argue that the Examiner erred in rejecting claims 41-49
and 51-55 under 35 U.S.C. § 112, second paragraph (Br. 15-17).
The Examiner asserts that the rejection is proper because
in the limitations [of claims 41-49 and 51-55] where “hardware
and/or software” are recited in the alternative, the respective
limitation may be interpretation [sic] as software [alone].
While an apparatus may be defined functionally, such
functionality must be tied into structure of the [claimed]
apparatus (please see MPEP § 2114). When software is
presented as an element of the [claimed] apparatus, it is not
clear what the resultant structure of the software would be,
thereby rendering the scope of the claims vague and indefinite.

(Ans. 4).

The Examiner thus maintains that “[i]n the interpretation of the
software being designed to perform the corresponding functionality, there is
no structural tie of the respective functionality to the [claimed] apparatus”
(Ans. 48). We agree with the Examiner.
Claim 41 depends from claim 39 and recites that the apparatus of
claim 39 further comprises “computer hardware and/or software designed to
select data associated with the selected traders based on predetermined
criteria.” Each of claims 42-49 and 51-55 ultimately depends from claim 39,
and similarly recites that the apparatus of claim 39 further comprises
“computer hardware and/or software designed to” perform a particular
function. Yet none of apparatus claims 41-49 and 51-55 recites that the
claimed software resides, for example, in the “tangible memory” and is
executable by a structural hardware component capable of implementing the
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software, such as a computer processor that would typically be present in
“computer hardware.”
Because the claims do not recite where the software is embedded or
where executed, we agree with the Examiner that the scope of the claims is
indeterminable. See, e.g., Med. Instrumentation & Diagnostics Corp. v.
Elekta AB, 344 F.3d 1205, 1210-20 (Fed. Cir. 2003) (finding that software
may be considered structure, or part of a structure, when embodied in a
tangible medium). Therefore, we will sustain the Examiner’s rejection of
claims 42-49 and 51-55 under 35 U.S.C. § 112, second paragraph.
Anticipation
Independent claims 1 and 20 and dependent claims dependent claims 2-5, 7,
8, 10, 13, 15-19, 21-27, 31, 34-38, 56, and 57
Appellants argue claims 1 and 20 together (Br. 17-22). We select
claim 1 as representative. Claim 20 stands or falls with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).2
Appellants argue that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 102(e) because “[t]he Action makes no showing that
Huttenlocher ‘383 meets the broadest reasonable interpretation of ‘bids and
offers inside the quotes made by dealers to their customers’ or that orders are
‘preferentially . . . presented’ based on being ‘inside the [general market]
quotes.’” (Br. 17). In this regard, Appellants assert that

2 Appellants state at page 18 of the Appeal Brief that “[o]n the current state
of the record, claims 1 and 20 stand or fall together.”
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[t]he claim language “bids and offers inside the quotes made by
dealers to their customers” refers to bids and offers having
prices that are higher than the highest bid to buy quoted by
dealers to their customers, and lower than the lowest offer to
sell quoted by dealers to their customers
(Br. 18, emphasis in original), and that the submarkets created by
Huttenlocher ‘343 only relate to trader identity, and not to price (Br. 19).
Appellants thus maintain that the Examiner has made no showing that “bids
and offers inside the quotes made by dealers to their customers” is disclosed
in Huttenlocher, either expressly or inherently (Br. 19-22).
After carefully considering Appellants’ argument, we agree with, and
adopt the Examiner’s response as set forth at pages 49-51 of the Answer. In
this regard, we note in particular that Appellants’ argument is not persuasive
at least because it is not commensurate with the scope of the claim. Claim 1
recites that “the selected traders are selected to participate in an inside
market based on predetermined inside market criteria” and that “the inside
market [is] a market including bids and offers inside the quotes made by
dealers to their customers.” However, the feature on which Appellants rely,
i.e., “bids and offers having prices that are higher than the highest bid to buy
quoted by dealers to their customers, and lower than the lowest offer to sell
quoted by dealers to their customers” is not recited in the claim. Moreover,
neither this definition nor a similar definition for “inside market” is
referenced in the Specification (Ans. 49). Instead, “[a] best bid-best offer
scenario and other types of spreads are described [in the Specification] as
establishing the ‘bids and offers inside the quotes made by dealer [sic] to
their customers’” (Ans. 49-50, citing Spec. 3, l. 30 – 4, l. 19).
As the Examiner explains:
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[claim 1] merely defines “the inside market [as] being a market
including bids and offers inside the quotes made by dealers to
their customers.” The inside market is not explicitly limited to
handling only bids and offers inside the quotes made by dealers
to their customers. Huttenlocher is able to limit visibility, and
thus the inside markets, to the most likely buyers or sellers,
based at least on current order bids, trades or other information
(¶¶ 11, 90), including a spread (¶¶ 55, 103) and pricing
aggressiveness (¶¶53, 69).

(Ans. 50-51).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 102(e). We also will sustain the Examiner’s
rejection of claim 20, which stands or falls with claim 1, and dependent
claims 2-5, 7, 10, 13, 15-19, 21-26, 31, 34-38, 56, and 57, which were not
separately argued.
Independent claim 39 and dependent claims 40-48, 50, 54, and 55
Appellants argue that claim 39 is allowable by reference to their
arguments with respect to claims 1 and 20. We are not persuaded, for the
reasons outlined above, that the Examiner erred in rejecting claims 1 and 20
under 35 U.S.C. § 102(e). Therefore, we will sustain the Examiner’s
rejection of claim 39 under 35 U.S.C. § 102(e). We also will sustain the
Examiner’s rejection of dependent claims 40-48, 50, 54, and 55, which were
not separately argued.
Dependent claims 11, 12, 13, 30, 32, 51, and 52
Claims 11, 12, and 13, claims 30 and 32, and claims 51 and 52 depend
from claims 1, 20, and 39, respectively. Each of these claims recites
displaying a best bid or a best offer in a distinguishing fashion. For
example, claim 11 recites that the method of claim 1 further comprises
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“displaying a distinguishing mark to indicate to the selected traders that an
inside market bid and/or offer has been submitted.”
We are not persuaded that the Examiner erred in rejecting clams 11,
12, 13, 30, 32, 51, and 52 under 35 U.S.C. § 102(e). Instead, we agree with
and adopt the Examiner’s response to Appellants’ argument as set forth at
pages 11-12, 25-28, and 40-41.
Huttenlocher discloses displaying a best bid or best offer to traders in
the general market and/or to select visibility groups of participants (see, e.g.,
Huttenlocher, Figs. 3 and 8-11). We find that the data representing the best
bid or offer in Huttenlocher is itself a distinguishable mark because of the
content it possesses, namely, that it describes the best bid/offer. Moreover,
even assuming arguendo that Huttenlocher does not explicitly disclose that
the best bid or best offer is displayed in a distinguishable fashion, e.g., with
a special displayed indicator, we agree with the Examiner that this difference
constitutes non-functional descriptive material that may not be relied on to
distinguish the claimed invention over the prior art because the data itself is
a best bid/offer indicator and any additional indicator used does not affect
this data. See 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). See
also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative).
Appellants argue that the Examiner’s rejection is based on a
“previously-unknown ‘descriptive material’ rule that exists nowhere in
writing” and is inapplicable to §§ 102 and 103 (Br. 23). In response, we
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direct Appellants’ attention to the cases cited above, including in particular,
In re Ngai, involving a § 102 rejection.
Obviousness
Claims 8, 9, 14, 27, 28, 33, 49, and 53
Appellants argue that the Examiner’s obviousness determination is
based on speculation and lacks substantial evidence support (Br. 24-25); that
the Examiner has failed to show a “‘reasonable expectation of success,’” per
KSR requirements (Br. 25-26); and that the Examiner has generally failed to
follow the “Examination Guidelines Update: Developments in the
Obviousness Inquiry After KSR v. Teleflex, 75 Fed. Reg. 53643 (Sept. 1,
2010)” (Br. 26-27). Appellants also ostensibly contend that the Examiner’s
Answer fails to comply with Manual of Patent Examining Procedure
(MPEP) § 1207.02 (Br. 27-28).
Yet Appellants do not point to, or even allege, any differences
between the claims and the cited references. Nor do Appellants otherwise
provide any technical analysis or explanation why it would have been non-
obvious to modify Huttenlocher in view of Mahanti, as the Examiner
proposes. Even if Appellants had pointed to such differences, the mere
existence of differences between the prior art and the claim does not
establish nonobviousness. Dann v. Johnston, 425 U.S. 219, 230 (1976).
The issue is “whether the difference between the prior art and the subject
matter in question ‘is a differen[ce] sufficient to render the claimed subject
matter unobvious to one skilled in the applicable art.’” Dann, 425 U.S.
at 228.

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Appellants’ contentions do not persuade us that the Examiner failed to
establish a prima facie case of obviousness. Therefore, we will sustain the
Examiner’s rejection of claims 8, 9, 14, 27, 28, 33, 49, and 53 under
35 U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 41-49 and 51-55 under 35 U.S.C.
§ 112, second paragraph, is affirmed.
The Examiner’s rejection of claims 1-5, 7, 10-13, 15-26, 30-32, 34-48,
50-52, and 54-57 under 35 U.S.C. § 102(e) is affirmed.
The Examiner’s rejection of claims 8, 9, 14, 27, 28, 33, 49, and 53
under 35 U.S.C. § 103(a) 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)(1)(iv).

AFFIRMED

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