Ex Parte Gomber et al

Patent Trial and Appeal Board

Nov 21, 2014

10307506 (P.T.A.B. Nov. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER GOMBER, KAI-OLIVER MAURER,
and MARCUS ZICKWOLFF
____________

Appeal 2012-001581
Application 10/307,506
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
BART A. GERSTENBLITH, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1–22, 25–34, and 36–38. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2012-001581
Application 10/307,506

2
BACKGROUND
Appellants’ invention is directed to an integrated order pre-matching
system in which orders are matched with quotes for execution (Spec. 1:3–6).
Claim 1 is illustrative:
1. Computer system operated in a security trading system
providing a reference market, the computer system being
arranged for processing orders and comprising:
a time stamp generator of a computing device
programmed to receive a message indicating a quote, the quote
including quote parameters defining a buy limit order and a sell
limit order, and to receive an order;
a quote storage unit of a computing device programmed
to store the quote parameters; and
a pre-match control unit of a computing device
programmed to determine whether the order matches the quote;
the pre-match control unit being arranged for executing the
order against the quote internally if the order matches the quote
by carrying out a pre-matching algorithm that marks the trade
for reporting and publication purposes, or automatically
forwarding the order to the reference market for execution if the
order does not match the quote, said pre-match control unit
being in direct communication with said time stamp generator,
said quote storage unit, and said reference market, such that
orders have a consistent priority.

Appellants appeal the following rejections:
Claims 1–22, 25–34, and 36–38 rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
Claims 1, 25–27, and 36–38 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.
Appeal 2012-001581
Application 10/307,506

3
Claims 1–22, 25–34, and 36–38 rejected under 35 U.S.C. § 102(e) as
being anticipated by Katz (US 7,246,093 B1; iss. July 17, 2007).

ISSUES
Did the Examiner err in rejecting claims 1–22, 25–34, and 36–38
under 35 U.S.C. § 101 because claim 1 is not directed to software per se and
because claim 2 is tied to a particular machine?
Did the Examiner err in rejecting claims 1, 25–27, and 36–38 under
35 U.S.C. § 112, second paragraph, because when the claim is read in light
of the Specification, the recitation of a time stamp generator, a quote storage
unit, and a pre-match control unit define the structure of the invention?
Did the Examiner err in rejecting claims 1–22, 25–34, and 36–38
under 35 U.S.C. § 102(e) because Katz does not disclose automatically
forwarding the order to the reference market?

ANALYSIS
Rejection under 35 U.S.C. § 101
With regard to claims 1, 25–27, and 36–38, the Examiner is of the
opinion that the subject matter of the above-referenced claims are non-
statutory because they are drawn to software per se. The preamble of claim
1 recites a “[c]omputer system.” A “system” is normally considered to be an
apparatus. See In re Walter, 618 F.2d 758, 762 n.2 (CCPA 1980). However,
we look to the body of the claim to see if it is consistent with the preamble.
Appellants argue that claim 1 is directed to hardware because it recites “a
time stamp generator,” “a quote storage unit,” and “a pre-match control
unit.” (App. Br. 5).
Appeal 2012-001581
Application 10/307,506

4
The terms “time stamp generator” and “pre-match control unit” by
themselves could refer to a software program. The limitation of a “time
stamp generator of a computing device programmed to” and “a pre-match
control unit of a computing device programmed to” indicates that structure is
programmed because software is not usually referred to as being
programmed. Because of the way the limitations are written, we interpret
the limitation to be a programmed structure.
In any case, the recitation of a “quote storage unit” must be
interpreted as an apparatus since software by itself is incapable of storing
anything.
We hold that Appellants have shown error in the conclusion that the
claims are directed to software per se.
Therefore, we will not sustain the Examiner’s rejection under 35
U.S.C. § 101 of claims 1, 25–27, 36, and 37.
We will also not sustain the rejection of claim 38 because claim 38 by
its dependence on claim 2 is directed to a method and as such is not software
per se.
We will not sustain the Examiner’s rejection of claim 2 under 35
U.S.C. § 101. In explaining this rejection, the Examiner only advances the
following conclusory statement:
Claim 2 is not tied to a particular machine or apparatus
nor does it transform a particular article into a different state or
thing, thereby failing the machine-or-transformation test;
therefore, claim 2 is non-statutory under § 101.
Ans. 6.

Appeal 2012-001581
Application 10/307,506

5
This conclusory statement by the Examiner is not sufficient in
establishing that claim 2 and claims 3–22 and 28–34 are directed to non-
statutory subject matter. In this regard, the Examiner has failed to explain
why claim 2, which includes recitations of a time stamp generator of a
computing device, a quote storage unit of a computing device, and a pre-
match control unit of a computing device, are not recitations of a specific
machine and thus are recitations of an abstract idea. In this regard, the
Examiner’s statement of the rejection does not include an analysis of the
claims and has no factual support.

Rejection under 35 U.S.C. § 112, second paragraph
We will not sustain the Examiner’s rejection of claims 1, 25–27, and
36–38 under 35 U.S.C. § 112, second paragraph, because we agree with
Appellants that it is clear from a reading of the Specification what is
intended by the recitation of a pre-match control unit, a quote storage unit,
and a pre-match control unit. In this regard, even if these structures were
embodied in software, such does not make the scope of the claims unclear.
In our view, claims set out and circumscribe a particular area with a
reasonable degree of precision and particularity.

Rejection under 35 U.S.C. § 102(e)
We adopt the Examiner’s findings of fact regarding the teachings of
Katz found on pages 7–8 and 17–18 of the Answer.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that Katz does not disclose automatically forwarding
the order to the reference market. Appellants argue in their Appeal Brief
Appeal 2012-001581
Application 10/307,506

6
that Katz’s limit order book is not a reference market (App. Br. 7).
However, the Examiner made it clear in the Answer that the limit order book
is not considered the reference market, but rather the away market is
considered the reference market (Ans. 17).
The Appellants also argue that the away market is not directly
connected to the exchange and is rather connected to the exchange through
an interface. (App. Br. 7). We do not find these arguments to be persuasive
because they are not commensurate in scope with claim 1. Claim 1 does not
recite that the reference market is directly connected to the exchange.
We are likewise not persuaded of error on the part of the Examiner by
Appellants’ argument that the away market of Katz is a reporting entity. We
note that, as depicted in Figure 1, away market 17 and reporting entity 19 are
not the same elements. In addition, we find that Katz teaches at column 9,
lines 31–51 that the system automatically sends the orders to the away
market for a better price and that the away market processes orders.
We agree with the Examiner and find that the teaching in Katz at
column 14, lines 61–67 that priority is assigned on an entry basis is a
teaching of orders having a consistent priority.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1 under 35 U.S.C. § 102(e). We will also sustain the Examiner’s
rejection of claims 2–22, 25–34, and 36–38 because Appellants have not
argued the separate patentability of these claims.

Appeal 2012-001581
Application 10/307,506

7
DECISION
We do not affirm the Examiner’s §§ 101 and 112, second paragraph,
rejections.
We affirm the Examiner’s § 102(e) rejection.
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) (2011).

AFFIRMED

hh