Ex Parte Mackay

Patent Trial and Appeal Board

Apr 25, 2016

11799609 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111799,609 05/01/2007 Anthony Mackay
104043 7590 04/27/2016
Tarter Krinsky & Drogin LLP
1350 Broadway
New York, NY 10018
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.
20044.0003 6940
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
04/27/2016 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):
patentdocket@tarterkrinsky.com
sformicola@tarterkrinsky.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY MACKAY
Appeal2014-004241
Application 11/799,609 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
NINA L. MEDLOCK, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Anthony Mackay (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 14--16 and 19--28. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
An oral hearing was held on April 5, 2016.
SUMMARY OF DECISION
We REVERSE.
1 The Appellant identifies Instinet Europe Limited as the real party in
interest. App. Br. 2.
Appeal2014-004241
Application 11/799,609
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
14. An anonymous block trade matching system, comprising:
a server configured to receive order data for an order of a
security;
a core database having stored therein said order data; and,
an alert generator configured to use said order data to transmit
to a plurality of prospective parties an alert anonymously describing
said order, said alert generator being configured to selectively send
said alert to said plurality of prospective parties based upon one or
more indications provided by the user in said order data of which type
of users are to receive said alert.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Srivastava
Huang
US 2004/0111356 Al
US 2008/0015965 Al
The following rejection is before us for review:
June 10, 2004
Jan. 17,2008
1. Claims 14--16 and 19--28 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Srivastava and Huang.
ISSUE
Did the Examiner err in rejecting claims 14--16 and 19-28 under
35 U.S.C. § 103(a) as being unpatentable over Srivastava and Huang?
2
Appeal2014-004241
Application 11/799,609
ANALYSIS
The Examiner relies on paragraphs 10-15, 163-168, and 303 of
Srivastava as evidence that the "alert generator," as claimed (as recited in
both independent claims 1 and 23) is disclosed in the prior art. See Final
Action 3 and 5. Said passages are reproduced in the Appeal Brief (see App.
Br. 13-14).
We have reviewed said passages and agree with the Appellant that "there is
no disclosure of alerts or an alert generator in Srivastava paragraphs [0010-
0015], [0163-0168] or [0303]" (App. Br. 14).
The Examiner responded that Srivastava discloses a user receiving a
verification message alert (see Answer 3, citing para. 141 ("During manual
order entry, a fund manager is immediately alerted if the allocated credit
lines are exceeded for an active order, and the order is rejected upon
saving.")). But that is inadequate as evidence to support the finding of fact
that Srivastava discloses the "alert generator," as claimed. Without more by
way of evidence or argument, of which there is none, a disclosure of a fund
manager being immediately alerted is inadequate to find that the "alert
generator," as claimed, is in fact disclosed in the prior art. It does not, for
example, address the claim limitation that the alert generator be configured
to anonymously transmit information to a plurality of parties.
A prima facie case of obviousness has not been made out in the first
instance by a preponderance of the evidence.
3
Appeal2014-004241
Application 11/799,609
DECISION
The decision of the Examiner to reject claims 14--16 and 19--28 is
reversed.
REVERSED
4