Ex Parte Johnston et al

Patent Trial and Appeal Board

Sep 21, 2016

12496831 (P.T.A.B. Sep. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/496,831 0710212009
30756 7590 09/23/2016
BANNER & WITCOFF, LTD.,
ATTORNEYS FOR CLIENT NO. 006119
10 SOUTH WACKER DRIVE
SUITE 3000
CHICAGO, IL 60606
FIRST NAMED INVENTOR
Scott Johnston
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.
006ll9.00159 5254
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/23/2016 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):
PT0-30756@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT JOHNSTON, JOHN FALCK, CHARLIE TROXEL JR.,
JAMES W. FARRELL, SHANTHI THIRUTHUV ADOSS,
ARJUNA ARIATHURAI, and DAVID SALVADOR!
Appeal2014-005192
Application 12/496,831 1
Technology Center 3600
Before ANTON W. PETTING, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1, 2, 4--14, and 16-20. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
Appellants' claimed "invention relates to derivative product trading
methods and systems and, in particular, to methods and systems that utilize a
variable defined order price." (Spec. i-f 2.)
1 According to Appellants, the real party in interest is Chicago Mercantile
Exchange, Inc. (Appeal Br. 3.)
Appeal2014-005192
Application 12/496,831
Claims 1, 12, and 13 are the independent claims on appeal. Claim 13
is illustrative and is reproduced below (emphasis added):
13. A method of determining a price for a product having an
associated underlying product, comprising:
receiving, at an exchange computer system, an order for
the product, wherein the order has a price, and wherein the order
price has a value;
receiving, at the exchange computer system, a designation
of a formula by which updated order price values can be
determined using values that include an underlying product price
value, a delta variable value and a gamma variable value;
subsequent to receiving the order and to receiving the
designation, and in response to a change in the underlying
product price value, at the exchange computer system
determining an updated value for the order price according to the
formula; and
executing, at the exchange computer system, a trade that
includes the order.
REJECTIONS
Claim 12 is rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 13, 14, and 16-20 are rejected under 35 U.S.C. § 102(e) as
anticipated by Addison (US 2004/0083158 Al, pub. Apr. 29, 2004).
Claims 1, 2, and 4--12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Addison and Marynowski (US 7, 177 ,833 B 1, iss.
Feb. 13, 2007).
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Application 12/496,831
Claim 13
ANALYSIS
Appellants argue that "Addison does not teach or suggest the claimed
feature of an 'exchange computer system."' (Appeal Br. 6.) Appellants
acknowledge that Addison discloses a pricing engine system 605 and a
network-based trading platform 630. (Id.) But, Appellants argue, "Addison
describes the pricing engine system 605 and network-based trading platform
630 as separate systems connected through interfacing software 815 by way
of network connection 610." (Id.) Addison does not, Appellants argue,
"teach or suggest combining these systems into a single system." (Id.)
The Examiner finds that
Addison discloses a "network-based trading platform" that
"allows a trader to enter an order to buy or sell a commodity,
which order is transmitted to an introducing broker or to the
central system of the applicable exchange" (para.66). This is
analogous to the Appellant's "exchange compute [sic] system,"
\~1hich "receives orders and transmits market data related to
orders and trades to users" (para.22 of the Appellant's
specification).
(Answer4.)
The Specification describes that an "[ e ]xchange computer system 100
may be implemented with one or more mainframe, desktop or other
computers." (Spec. i-f 22.) In other words, the Specification teaches that one
or more computers can make up the "exchange computer system." When
the exchange computer system is made up of multiple computers, these
computers must be connected in some manner, such as via network or other
connections. We give claims their "broadest reasonable interpretations
consistent with the specification." In re Hyatt, 211F.3d1367, 1372 (Fed.
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Cir. 2000). Under this standard, "claim language should be read in light of
the specification as it would be interpreted by one of ordinary skill in the
art." In re Sneed, 710 F.2d 1544, 1548 (Fed. Cir. 1983). Appellants do not
point to persuasive evidence in the Specification or elsewhere to establish
that one of ordinary skill would have excluded network connections from
these connections. Therefore, under a broadest reasonable interpretation, an
"exchange computer system" may include one or more computers connected
via a network connection.
Thus, Appellants' argument that Addison's pricing engine system 605
and network-based trading platform 630 are not part of "an exchange
computer system," as recited in claim 13, is not persuasive.
Appellants next argue that the Office Action "fails to cite specific
disclosure in Addison for: (i) receipt of an order for a derivative product at a
pricing engine system." (Appeal Br. 7.) However, claim 13 does not recite
"receipt of an order for a derivative product at a pricing engine." Therefore,
Appellants' argument is not commensurate with the scope of the claim and,
thus, is not persuasive of error.
Appellants next argue that the Office Action "fails to cite specific
disclosure in Addison for: ... (ii) receipt of a designation of a formula by
which an [sic] updated order price values can be determined." (Id.)
The Examiner disagrees, citing paragraphs 9, 33, 42, and 65 of
Addison. (Answer 16.)
Addison discloses that "the system administrator enters the
appropriate set-up data for each financial instrument (subject derivative) for
which pricing data is to be derived . . . . Such data is particular to the
pricing-engine software. Examples of such set-up data include the class of
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Application 12/496,831
derivative; [and] price-affecting variables." (Addison il 42.) In other
words, Addison discloses entering data so as to designate a formula by
which pricing data is to be derived. Addison further discloses that the
system administrator may "input[] the appropriate network addresses from
which up-to-date information is continuously downloaded" for updating
pricing. (Id.)
In view of the above, we are not persuaded that Addison does not
disclose receipt of "a designation of a formula by which updated order price
values can be determined."
Next, Appellants argue that the Office action "fails to cite specific
disclosure in Addison for: ... (iii) executing, at a pricing engine system, a
trade that includes the order." (Appeal Br. 7.) However, claim 13 does not
recite "executing, at a pricing engine system, a trade that includes the order."
Appellants' argument is not commensurate with the scope of the claim and,
thus, is not persuasive of error.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 13.
Claim 14
Claim 14 recites: "The method of claim 13, further comprising:
periodically determining an updated value for the order price according to
the formula and an updated price value for the underlying product."
Appellants assert that Addison fails to disclose "periodically
determining an updated value for the order price according to the formula
and an updated price value for the underlying product," as recited in
claim 14. However, Appellants do not explain why the Examiner's finding
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that this limitation is disclosed in paragraphs 25-27 and 59 of Addison is
erroneous. (See Final Action 4; see also 37 C.F.R. § 41.37(c)(iv).)
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 14.
Claims 19 and 20
Claims 19 and 20 are rejected under § 102( e) even though claim 1,
from which both claims depend, is rejected under§ 103(a).
Claim 19 recites: "The method of claim 1, wherein receiving a
designation of the formula comprises receiving the formula with the order."
Claim 20 recites: "The method of claim 1, wherein receiving a
designation of the formula comprises receiving a selection of the formula."
As discussed below, claim 1, from which claims 19 and 20 depend,
includes the recitation of "receiving, at the exchange computer system from
the trader, a designation of a formula by which updated order price values
can be determined."
Citing paragraphs 9 and 63 of Addison, which are relied on by the
Examiner in rejecting claims 19 and 20 (Final Action 5), Appellants argue
that Addison does not disclose "receiving, at the exchange computer system
from the trader, a designation of a formula by which updated order price
values can be determined." (Appeal Br. 9-10.) The Examiner does not
indicate where Addison discloses this receiving step.
Therefore, we are persuaded that the Examiner erred in rejecting
claims 19 and 20 under § 102( e ).
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Claims 1 and 12
Claim 1 recites (emphasis added):
1. A method of dynamically determining a price for an order
for a derivative product at an exchange, comprising:
receiving, at an exchange computer system, an order from
a trader for a derivative product, wherein the order has a price,
and wherein the order price has a value;
receiving, at the exchange computer system from the
trader, a designation of a formula by which updated order price
values can be determined using values that include an underlying
product price value, a delta variable value and a gamma variable
value;
subsequent to receiving the order and to receiving the
designation, and in response to a change in the underlying
product price value, utilizing the formula at the exchange
computer system to determine an updated value for the order
price without further input from the trader; and
executing, at the exchange computer system, a trade that
includes the order.
The Examiner finds that
Addison does not disclose receiving at an exchange computer
system, an order from a trader or receiving, at the exchange
computer system from the trader, a designation of a formula.
Marynowski teaches receiving an order from a trader and
receiving designation of a formula from a trader (col. I, lines 5-
52). It would have been obvious to one having ordinary skill in
the art at the time the invention was made to incorporate the
teachings of Addison within Marynowski for the motivation of
providing an alternative means of order submission.
(Final Action 6.)
Appellants argue that "[t]here is no teaching or suggestion in
Marynkowski [sic] for receiving, at the automated trading system from the
trader, a designation of a formula by which updated order price values can
be determined." (Appeal Br. 12.) And, Appellants argue, "most
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significantly, Marynkowski [sic] does not include any teaching or suggestion
for 'receiving, at the exchange computer system from the trader, a
designation of a formula by which updated order price values can be
determined using values that include an underlying product price value, a
delta value and a gamma value."' (Id.)
Nonobviousness, however, is not established by attacking references
individually when the rejection is based on a combination of references. See
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). A reference
"must be read, not in isolation, but for what it fairly teaches in combination
with the prior art as a whole." Id. Moreover, Marynowski is merely cited
for "teach[ing] that input by[] a trader is known and that specifications may
be modified by a trader." (Answer 23.) In other words, the combination of
Addison and Marynowski is simply a combination of familiar elements
according to known methods. See KSR Int'! Co. v. Teleflex Inc., 550 U.S.
398, 416 (2007) ("The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.").
In view of the above, including the discussion of claim 13, Appellants
have not persuaded us that the Examiner erred in concluding that "[i]t would
have been obvious to one having ordinary skill in the art at the time the
invention was made to incorporate the teachings of Addison within
Marynowski for the motivation of providing an alternative means of order
submission." (Final Action 6.) For the same reasons, Appellants have not
persuaded us that the Examiner erred in rejecting claim 1.
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Claim 12 contains similar language and is not separately argued.
Therefore, for the same reasons, we are not persuaded that the Examiner
erred in rejecting claim 12 under§ 103(a).
With regard to the rejection of claim 12 under§ 101, Appellants
present no argument. Therefore, we summarily affirm the rejection of
claim 12 under § 10 1.
Claim 2
Claim 2 recites: "The method of claim 1 further comprising:
periodically determining an updated value for the order price based on the
formula and a more recent price value for the underlying product."
Appellants assert that Addison and Marynowski fail to disclose or
suggest "periodically determining an updated value for the order price a [sic]
based on the formula and a more recent price value for the underlying
product." (See Appeal Br. 12.) However, Appellants do not explain why the
Examiner is alleged to have erred in finding that this limitation is disclosed
in paragraph 2 of Addison. (See id.; see also Final Action 7, 37 C.F.R.
§ 41.37(c)(iv).) Therefore, we are not persuaded that the Examiner erred in
rejecting claim 2.
Claim 11
Claim 11 recites: "The method of claim 1, wherein receiving a
designation of a formula comprises receiving a designation of a formula
supplied by the exchange computer system."
Appellants assert that Addison and Marynowski fail to disclose or
suggest "receiving, at the exchange computer system from the trader, a
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designation of a formula by which updated order price values can be
determined wherein the designation of the formula is supplied by the
exchange computer system." (See Appeal Br. 13.) However, Appellants do
not explain why the Examiner's finding that this limitation is disclosed in
paragraphs 9 and 63 of Addison is erroneous. (See id.; see also Final
Action 8, 37 C.F.R. § 41.37(c)(iv).) Therefore, we are not persuaded that
the Examiner erred in rejecting claim 11.
DECISION
The Examiner's rejection of claim 12 under 35 U.S.C. § 101 is
summarily affirmed.
The Examiner's rejection of claims 13, 14, and 16-18 under 35 U.S.C.
§ 102( e) is affirmed.
The Examiner's rejection of claims 19 and 20 under 35 U.S.C.
§ 102( e) is reversed.
The Examiner's rejection of claims 1, 2, and 4--12 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)(l )(iv)(2013).
AFFIRMED-IN-PART
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