Ex Parte Myr

Board of Patent Appeals and Interferences

Mar 10, 2010

10867729 (B.P.A.I. Mar. 10, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVID MYR
___________

Appeal 2009-005899
Application 10/867,729
Technology Center 3600
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Decided: March 10, 2010
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Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-005899
Application 10/867,729

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STATEMENT OF THE CASE
David Myr (Appellant) seek our review under 35 U.S.C. § 134 (2002)
of the final rejection of claims 1, 3-9, 11-15, and 18-20. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM. 1

THE INVENTION
This invention is an electronic currency trading exchange.
Specification: Abstract.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A system, for real-time facilitation of foreign exchange
currencies transactions, the system comprising:
a multilateral trade settlement server for receiving
respective buy and sell trading orders from a plurality of
traders, the multilateral trade settlement server matching one of
the buy trading orders to one of the sell trading orders based on
respective bid and ask prices in respectively different currencies
to generate a foreign exchange currency trade, the multilateral
trade settlement server generating the foreign exchange
currency trade from among the buy and sell trading orders
where the respective bid and ask prices are equal.

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jun. 17, 2008) and Reply Brief (“Reply Br.,” filed Oct. 27, 2008),
and the Examiner’s Answer (“Answer,” mailed Aug. 27, 2008).

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Sandhu
Wallace
US 6,347,307 B1
US 7,299,923 B1
Feb. 12, 2002
Jun. 19, 2007
The Examiner took official notice that “if there are regulations to
become an exchange member then clearly the process of becoming an
exchange member is know[n] to one of ordinary skill in the art at the time of
invention.” Answer 7. [Hereinafter Official Notice I.]
The Examiner took official notice that “if there are standard
“agreements” for a CCSBS then clearly the process of becoming an
exchange member is know[n] to one of ordinary skill in the art at the time of
the invention.” Answer 7. [Hereinafter Official Notice II.]
The Examiner took official notice ‘that having a wire transfer between
two parties to settle a[n] transaction is know[n] to one of ordinary skill in the
art at the time of the invention.” Answer 8. [Hereinafter Official Notice
III.]
The Examiner took official notice that “if there are standard
“agreements” then clearly the process of becoming an exchange member is
known to one of ordinary skill in the art at the time of the invention.”
Answer 8. [Hereinafter Official Notice IV.]
The following rejections are before us for review:
1. Claims 1, 4, 8-9, 11-17, and 20 are rejected under 35 U.S.C.
§103(a) as being unpatentable over Sandhu and Wallace.
2. Claims 3 and 5-7 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Sandhu, Wallace, and Official Notices I-IV.
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3. Claims 18-19 are rejected under 35 U.S.C. 103(a) as being
unpatentable over Sandhu, Wallace, and Design Choice.

ARGUMENT
The Appellant and the Examiner dispute whether the combination of
Sandhu and Wallace suggests a server that matches one of the buy trading
orders to one of the sell trading orders based on respective bid and ask prices
and that generates a foreign exchange currency trade from the among the
buy and sell trading orders where the respective bid and ask prices are equal,
as recited in claim 1.
The Examiner cites item 3275 in Figure 8, item 60 in Figure 1, and
column 4, lines 22-25 of Sandhu to teach a server that matches the orders
based on bid and ask prices and generates a foreign exchange currency trade
from among the orders when the prices are equal. Answer 3-4. The
Examiner applied Wallace to teach that the prices are in different currencies.
Answer 4.
The Appellant responds by arguing that “[f]or a reference to be
properly used to reject Appellant’s claim 1, the reference would need to
show a server that matches a buy trading order to a sell trading order
based on bid and ask prices in different currencies, where the bid and ask
prices are equal.” App. Br. 4 (emphasis original). The Appellant assert
that Sandhu shows a server that provides for the automatic exchange of
messages between a member (e.g. buyer) and a provider (e.g. seller) when
negotiation a trade and, therefore, does not disclose “a server that matches a
buy trading order to a sell trading order based on bid and ask prices in
different currencies, where the bid and ask prices are equal.” App. Br. 4-
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5 (emphasis original). Further, the Appellant asserts that Wallace does not
describe a server as. App. Br. 5-6.
In the Answer, the Examiner responds by maintaining that the
rejection. Answer 10-11.

ISSUE
The issue is whether claim 1 is obvious under 35 U.S.C. §103(a) over
Sandhu and Wallace. Specifically, the issue is whether one of ordinary skill
in the art would have been led by Sandhu and Wallace to a server that
matches one of the buy trading orders to one of the sell trading orders based
on respective bid and ask prices in respectively different currencies to
generate a foreign exchange currency trade, where the respective bid and ask
prices are equal. The rejections of claims 3-9, 11-15, and 18-20 also turn on
this issue.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Sandhu
1. Sandhu describes a system that allows users to engage in capital
market transactions via the internet. Col. 2, ll. 10-15.
2. Sandhu describes that one type of foreign exchange transactions is
a Foreign Exchange Spot, where a quantity of one currency is
exchanged for another. Col. 11, ll. 14-20.
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Wallace
3. Wallace describes a system for matching desired purchases and
sales of mis-matched items, such as financial instruments. Col. 1,
ll. 13-15.
4. Wallace gives Non-Delivered Forward Spreads (NDFS) and
Forward Rate Agreements (FRAs), which include foreign
currencies, as examples of the financial instruments. Col. 1, ll. 20-
33.
5. Wallace describes a party creating an identification of an item they
wish to buy or sell and indicating the total bid/offer price in the
identification. Col. 2, ll. 27-39.
6. Wallace describes using the information in the identification in a
matching process to match the traits of items being bought or sold.
See col. 2, l. 49 - col. 3, l. l.
7. Wallace states: “Traits (e.g., buy dates) of items are then matched
with corresponding or substantially corresponding traits (e.g., sell
dates) of other items, and a list of potential combinations of
transaction matches is established to achieve the desired
transaction. Finally, the matches may be manually or
automatically transacted . . .”. Col. 2, l. 64 – col. 3, l. 3.
8. Wallace states:
As should be clear from the previous example, the
present invention preferably does not require that the
total buy and sell prices for the switches to match in
order for a match to be formed. Nevertheless, the present
invention could be implemented so that price matching,
or matching of any other characteristics of the items, is
required.
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Col. 5, ll. 62-67.
9. Wallace describes that a server 2202 performs the processing in the
invention. Col. 10, ll. 18-28.

PRINCIPLES OF LAW
Obviousness
Section 103 forbids issuance of a patent when ‘the
differences between the subject matter sought to be patented
and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to
a person having ordinary skill in the art to which said subject
matter pertains.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

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ANALYSIS
The rejection of claims 1, 4, 8-9, 11-15, and 20 under §103(a) as being
unpatentable over Sandhu and Wallace.
The Appellant argues claims 1, 4, 8-9, 11-15, and 20 as a group. App.
Br. 3-6. We select claim 1 as the representative claim for this group, and the
remaining claims 4, 8-9, 11-15, and 20 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2009).
The Appellant asserts that “[f]or a reference to be properly used to
reject Appellant’s claim 1, the reference would need to show a server that
matches a buy trading order to a sell trading order based on bid and ask
prices in different currencies, where the bid and ask prices are equal.”
App. Br. 4 (emphasis original). The Appellant then argues that neither
Sandhu nor Wallace shows such a server. App. Br. 4-6.
However, the test for obviousness is not that the claimed invention
must be expressly shown in one of the reference. It is what the combined
teachings of the references would have suggested to one of ordinary skill in
the art. In re Keller, 642 F.2d 413, 425 (CCPA 1981)
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
in the art.
Nevertheless, we find that Wallace teaches a server that is structure to
perform the limitations at issue. Claim 1 recites,
a server that matches one of the buy trading orders to one of the
sell trading orders based on respective bid and ask prices in
respectively different currencies to generate a foreign exchange
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currency trade, the multilateral trade settlement server
generating the foreign exchange currency trade from among the
buy and sell trading orders where the respective bid and ask
prices are equal.
We note that the phrase “where the bid and ask prices are equal” in claim 1,
does not refer to the recited orders that are matched, as in the Appellant’s
argument. See, for example, App. Br. 4 (“Appellant, however, claims a
server that matches a buy trading order to a sell trading order where the bid
and ask prices, in different currencies, are equal.”). The phrase refers to
the recited orders from which the server generates the trade.
We find that Wallace teaches a server “that matches one of the buy
trading orders to one of the sell trading orders based on respective bid and
ask prices.” Wallace describes a server (FF 9) that performs a matching
process that matches items that a party wishes to buy with items that another
party wishes to sell. FF 3 and 6-7. Wallace describes that the items can
include financial instruments that involve the exchange of foreign currency.
FF 4. We note that the Appellant states that the claimed “different
currencies” feature is not at issue. Reply Br. 5.
We also find that Wallace teaches a server that generates trades from
among the buy and sell trading orders where the respective bid and ask
prices are equal. Wallace states “[t]he present invention could be
implemented so that price matching, or matching of any other characteristic
of the items, is required.” FF 8. Wallace describes that the transaction can
be automatically transacted by the server. FF 7.
Accordingly, we find that the Appellant has not overcome the prima
facie showing of obviousness, and we sustain the rejection of claims 1, 4, 8-
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9, 11-15, and 20 under §103(a) as being unpatentable over Sandhu and
Wallace.

The rejection of claims 3 and 5-7 under §103(a) as being unpatentable over
Sandhu, Wallace, and Official Notices I-IV.
We also shall sustain the standing 35 U.S.C. § 103(a) rejection of
dependent claims 3 and 5-7 as being unpatentable over Sandhu, Wallace,
and Official Notices I-IV since the Appellant did not make and has not
challenged such with any reasonable specificity, thereby allowing claims 3
and 5-7 to stand or fall with parent claim 1 (see In re Nielson, 816 F.2d
1567, 1572 (Fed. Cir. 1987)).

The rejection of claims 18 and 19 under §103(a) as being unpatentable over
Sandhu, Wallace, and Design Choice.
We also shall sustain the standing 35 U.S.C. § 103(a) rejection of
dependent claims 18 and 19 as being unpatentable Sandhu, Wallace, and
Design Choice since the Appellant has not challenged such with any
reasonable specificity, thereby allowing claims 18 and 19 to stand or fall
with parent claim 1 (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir.
1987)).

CONCLUSIONS OF LAW
We conclude that the Appellant have not overcome the prima facie
showing of obviousness as to the rejections of:
claims 1, 4, 8-9, 11-17, and 20 under 35 U.S.C. §103(a) as being
unpatentable over Sandhu and Wallace;
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claims 3 and 5-7 under 35 U.S.C. §103(a) as being unpatentable over
Sandhu, Wallace, and Official Notices I-IV; and
claims 18-19 under 35 U.S.C. 103(a) as being unpatentable over
Sandhu, Wallace, and Design Choice.

DECISION
The decision of the Examiner to reject claims 1, 3-9, 11-15, and 18-20
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) (2007).

AFFIRMED

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