Ex Parte Lerner

Board of Patent Appeals and Interferences

Mar 13, 2012

09907450 (B.P.A.I. Mar. 13, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JULIE A. LERNER
____________

Appeal 2011-002093
Application 09/907,450
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-002093
Application 09/907,450

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STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 41, 53-56, 60-63, and 90-98 which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b)
(2002). Oral arguments were presented on March 6, 2012.

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellant’s claimed invention is directed to an electronic market
place for trading physical commodities (Spec. 1:8-9). Claim 90, reproduced
below, is representative of the subject matter on appeal.

90. A computer-implemented system for commodity exchange,
comprising:
i) a commodity exchange interface configured to display data
substantially simultaneously to at least a first customer and a second
customer, wherein each of the first and second customers is an end-to-
end market player;
ii) the commodity exchange interface including at least a first
real-time, dynamic trading window associated with the first customer
and a second real-time, dynamic trading window associated with the
second customer, wherein each of the first and second real-time,
dynamic trading windows is configured to display for a specific
physical commodity at least the following:
a) a negotiable quantity of the physical commodity,
wherein the negotiable quantity is an amount of the physical
commodity that is tradeable on a domestic, regional or international
market and wherein the negotiable quantity is negotiable in amounts
that are not limited to a standardized contract size;
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b) a negotiable shipment period for the physical
commodity, wherein the negotiable shipment period specifies at least
the time period at which the physical commodity is available for pick
up or delivery and wherein the negotiable shipment period is
negotiable in amounts that are not limited to a standardized delivery
time period;
c) a negotiable quality for the physical commodity;
iii) the commodity exchange interface including a system to
allow for direct negotiations prior to contract formation between the
first and second customers for at least the negotiable quantity,
negotiable shipment period and negotiable quality; and
iv) a set of program instructions configured to process at least
one commodity trade made directly between the first and
second customers, the commodity trade being updated in at
least the first real-time, dynamic trading window associated
with the first customer and the second real-time, dynamic
trading window associated with the second customer.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Gutterman US 5,297,031 Mar. 22, 1994
Ferstenberg US 5,873,071 Feb. 16, 1999
Shepherd US 6,912,510 B1 Jun. 28, 2005
Kimle US 7,124,108 B1 Oct. 17, 2006

The following rejections are before us for review1:

1 The Examiner Answer at page 5 has listed a “Double Patenting” heading
but the text of section uses the term “objected to” and does not recite a
double patenting rejection. Claims 90-98 have thus substantively been
objected to rather than rejected. This objection is not subject matter
reviewable by the Board of Patent Appeals and Interferences but rather
petitionable subject matter. See M.P.E.P. 1002 and 1201. Regardless, an
examination of the issues presented by the Examiner for claims 90-98 does
not warrant a double patenting rejection for these claims with respect to
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1. Claims 41, 53-56, 60-63, and 90-98 are rejected under 35
U.S.C. § 103(a) as unpatentable over Kimle, Shepherd, Ferstenberg, and
Gutterman.

THE ISSUES
With regards to claim 90 the issue turns on whether it would have
been obvious to modify Kimle, Shepherd, Ferstenberg, and Gutterman to
meet claim limitation “c) iii” listed in the claim above. The remaining
claims turn on a similar issue.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:2
FF1. Kimle discloses a method of contracting agricultural products using
the Internet and providing real time information about the products available
for contract (Abstract).
FF2. Shepard discloses a method of exchanging an obligation (Title) and at
Col. 4:17-39 discloses contract formulation including order placement,
pricing and matching.
FF3. Shepard at Col. 33:14-41 discloses that contract matching occurs.
FF4. Shepard at Col.41:55-56 discloses that contracts can be modified and
liquidated after their creation.

claims 41, 53-56, and 60-63 and we decline to present a new grounds of
rejection in that respect.
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF5. Ferstenberg discloses a method for order management by market
brokers (Title).
FF6. Guttenberg discloses a broker workstation for trading commodities
and futures contracts (Abstract).

ANALYSIS
The Appellant argues that the rejection of claim 90 using the cited
combination of Kimle, Shepard, Ferstenberg, and Gutterman is improper.
(Br. 18-26, Reply Br. 2-13).
In contrast, the Examiner has determined that the cited rejection of
record for claim 90 is proper (Ans. 5-15, 18-25).
We agree with the Appellant. Claim 90 require in part:
iii) the commodity exchange interface including a system to allow for
direct negotiations prior to contract formation between the first and
second customers for at least the negotiable quantity, negotiable
shipment period and negotiable quality; (Claim 90).

Thus, the claim requires that on the commodity interface that direct
negotiations can take place prior to contract formation for negotiable
quantity, negotiable shipment period and negotiable quality.
The Examiner has acknowledged that Kimle and Shepard do not teach
“direct negotiations prior to contract formation between the first and second
customers” but cited instead to Ferstenberg to show this (Ans. 11). The
Appellant acknowledge that “direct negotiations prior to contract formation”
is well known in the art (Reply Br. 3) but maintains that the cited
combination would not be obvious because Shepherd uses a “matching
system” (Br. 22). Shepard does show that at least a portion of the system
operates on a traditional order “matching” system (FF2-FF3). Here, there is
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no articulated reasoning with rational underpinnings for combining the four
cited references in the manner of the cited rejection to have the system of
Shepard modified to allow negotiations prior to contract formation between
the first and second customers as at least portion of Shepard operates on a
“matching system” where prior negotiations between the parties necessarily
does not take place. The proposed modification to alter Shepard in the
manner recited lacks articulated reasoning with rational underpinnings to
support a prima facie case of obviousness and the cited rejection of claim 90
and its dependent claims are not sustained. As a prima facie case of
obviousness has not been established, we not need considerer the submitted
Declarations of record. Claim 41 contains a similar limitation and the
rejection of this claim and its dependent claims are not sustained for these
same reasons.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims listed in the Rejection Section above.

DECISION
The Examiner’s rejection of claims 41, 53-56, 60-63, and 90-98 is
reversed.

REVERSED

MP