Ex Parte Sweeting et al

Patent Trial and Appeal Board

Feb 8, 2016

10640829 (P.T.A.B. Feb. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/640,829 08/13/2003
63710 7590 02/10/2016
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Michael Sweeting
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.
03-1079B 9091
EXAMINER
FIELDS, BENJAMIN S
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
02/10/2016 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):
patentdocketing@cantor.com
lkorovich@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL SWEETING, HOWARD W. LUTNICK, and
LEEAMAITIS
Appeal2014-002133 1
Application 10/640,8292
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-122. We have jurisdiction under 35 U.S.C. § 6(b). An
oral hearing was held on January 28, 2016.
We REVERSE.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
January 14, 2010) and Reply Brief ("Reply Br.," filed April 16, 2010), and
the Examiner's Answer ("Ans.," mailed February 16, 2010). The record
includes a transcript of the oral hearing held January 28, 2016.
2 Appellants identify BGC Partners Inc. as the real party in interest. App.
Br. 1.
Appeal2014-002133
Application 10/640,829
CLAIMED fNVENTION
Appellants' claimed invention "relates to the trading of securities"
and, more particularly, "to the trading of securities in a thinly traded market
using a bid/offer liquidity spread trading mechanism" (Spec. i-f 1 ).
Claim 61, reproduced below, is illustrative of the subject matter on
appeal:
61. A method for electronically executing a trade, said
method comprising:
receiving from a requesting participant a request for a
quote for at least one item, in which the request for the quote
includes a spread requirement identifying a spread value
between a bid and an offer for the at least one item that must be
met to fulfill the quote;
rece1vmg from said requesting part1c1pant an
acknowledgement of an obligation to execute a trade of the at
least one item if the quote is provided to the requesting
participant and if the quote includes a spread that meets the
identified spread requirement, said trade exchanging said item
between said requesting participant and at least one responsive
participant;
receiving from at least one of a first responsive
participant and a second responsive participant a quote for said
item; and
providing the quote to the requesting participant.
REJECTIONS
Claims 1-17, 20, 23-35, 38-79, 82, 85-96, and 99-122 are rejected
under 35 U.S.C. § 102(e) as anticipated by Gilbert (US 2002/0198816 Al,
pub. Dec. 26, 2002).
Claims 18, 19, 21, 22, 36, 37, 80, 81, 83, 84, 97, and 98 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Gilbert.
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Appeal2014-002133
Application 10/640,829
ANALYSIS
Anticipation
Independent claim 61 and dependent claims 62-79, 82, 85-96, and 99-122
Appellants argue that the Examiner erred in rejecting claim 61 under
35 U.S.C. § 102(e) because Gilbert does not disclose an obligation to
execute a trade if certain conditions are met, i.e., "receiving from said
requesting participant an acknowledgement of an obligation to execute a
trade ... if the quote is provided to the requesting participant and if the
quote includes a spread that meets the identified spread requirement," as
recited in claim 61 (App. Br. 13-14). The Examiner maintains that the
rejection is proper, and cites the Abstract, Figures 1--4, paragraphs 11-13,
and claim 1 of Gilbert as disclosing the argued limitation (Final Act. 4, 12;
see also Ans. 15-16). Although the cited portions of Gilbert disclose trading
opportunities, we agree with Appellants that there is nothing in these
portions of Gilbert that discloses an "obligation to execute a trade," as called
for in claim 61 (App. Br. 13).
Therefore, we do not sustain the Examiner's rejection of claim 61
under 35 U.S.C. § 102(e). For the same reasons, we also do not sustain the
rejection of dependent claims 62-79, 82, 85-96, and 99-122.
Independent claim 1 and dependent claims 2-17, 20, 23-35, 38-60
Independent claim 1 includes language substantially identical to the
language of claim 61, and was rejected based on the same rationale applied
with respect to claim 61 (see Final Act 4). Therefore, we do not sustain the
Examiner's rejection under 35 U.S.C. § 102(e) of independent claim 1 and
claims 2-17, 20, 23-35, 38---60, which depend therefrom, for the same
reasons set forth above with respect to claim 61.
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Appeal2014-002133
Application 10/640,829
Obviousness
Dependent claims 18, 19, 21, 22, 36, 37, 80, 81, 83, 84, 97, and 98
In rejecting dependent claims 18, 19, 21, 22, 36, 37, 80, 81, 83, 84,
97, and 98 under 35 U.S.C. § 103(a), the Examiner acknowledges that
Gilbert does not expressly disclose the subject matter of any of claims 18,
19, 21, 22, 36, 37, 80, 81, 83, 84, 97, and 98 (Final Act. 12-15). Yet the
Examiner finds that it would have been obvious at the time of Appellants'
invention to modify the method and system of Gilbert to meet the claim
language (id.).
The Examiner ostensibly maintains that the rejections are based on the
Examiner's assertion of Official Notice, which Appellants have failed to
adequately traverse (Ans. 21-23). Yet we find no such assertions of Official
Notice in the Final Office Action; nor does the Examiner identify any
"facts" of which Official Notice is taken. Instead, after acknowledging that
Gilbert does not expressly disclose the claimed subject matter, the Examiner
summarily concludes that "[a ]t the time of [the] invention it would have
been obvious to modify the method of Gilbert" to arrive at Appellants'
claimed invention (Final Act. 12-15).
On this record, the Examiner has failed to establish a prima facie case
of obviousness. See In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)
("[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness."). Therefore, we do not sustain the Examiner's rejection of
claims 18, 19, 21, 22, 36, 37, 80, 81, 83, 84, 97, and 98 under 35 U.S.C.
§ 103(a).
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Appeal2014-002133
Application 10/640,829
DECISION
The Examiner's rejection of claims 1-17, 20, 23-35, 38-79, 82, 85-
96, and 99-122 under 35 U.S.C. § 102(e) is reversed.
The Examiner's rejection of claims 18, 19, 21, 22, 36, 37, 80, 81, 83,
84, 97, and 98 under 35 U.S.C. § 103(a) is reversed.
REVERSED
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