Ex Parte Sweeting et alDownload PDFPatent Trial and Appeal BoardFeb 8, 201610640829 (P.T.A.B. Feb. 8, 2016) Copy Citation 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. 2 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. 3 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). 4 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 5 Copy with citationCopy as parenthetical citation