Ex Parte Usher et al

Board of Patent Appeals and Interferences

May 25, 2011

09858844 (B.P.A.I. May. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte BRUCE USHER, 8
BARRY WITKOW, and 9
DOUGLAS G. HUNTINGTON 10
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12
Appeal 2010-002838 13
Application 09/858,844 14
Technology Center 3600 15
___________ 16
17
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 18
BIBHU R. MOHANTY, Administrative Patent Judges. 19
FETTING, Administrative Patent Judge. 20
DECISION ON APPEAL 21
This is a correction to the Decision mailed April 11, 2011. That 22
Decision erroneously stated that the rejections were sustained at Decision 7. 23
This corrected version states that the rejections are not sustained. The new 24
ground of rejection is unaffected.25
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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed June 17, 2008) and Reply Brief (“Reply Br.,” filed June 17,
2008), and the Examiner’s Answer (“Ans.,” mailed May 27, 2008).
Bruce Usher, Barry Witkow, and Douglas G. Huntington (Appellants) 2
seek review under 35 U.S.C. § 134 (2002) of a final rejection of claims 1-17, 3
23, 27, 28, 31-34, 40, 127-136, and 138-156, the only claims pending in the 4
application on appeal. We have jurisdiction over the appeal pursuant to 5
35 U.S.C. § 6(b) (2002). 6
The Appellants invented a way of electronic trading (Specification ¶ 7
0001). 8
An understanding of the invention can be derived from a reading of 9
exemplary claim 1, which is reproduced below [bracketed matter and some 10
paragraphing added]. 11
1. A method comprising: 12
[1] receiving a request 13
to post an offer for a swap 14
from a first user; 15
[2] communicating a swap term sheet 16
to the first user, 17
the swap term sheet comprising 18
at least one element therein 19
for the first user to specify 20
at least one term of an offer, 21
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the at least one element included in the swap term 1
sheet 2
based at least on preferences 3
set by the first user 4
for generating swap term sheets; 5
[3] receiving the offer from the first user; and 6
[4] communicating the offer for the swap comprising the at 7
least one specified term 8
to at least one other user 9
in communication with the first user 10
over a communications network. 11
The Examiner relies upon the following prior art: 12
Huberman US 5,826,244 Oct. 20, 1998
May US 6,421,653 B1 Jul. 16, 2002
Gulati US 6,778,968 B1 Aug. 17, 2004
Claims 1-8, 14, 16-1 7, 23, 27-28, 31-34, 40, and 127-163 stand rejected 13
under 35 U.S.C. § 103(a) as unpatentable over May and Official Notice. 14
Claims 32 and 90 stand rejected under 35 U.S.C. § 103(a) as 15
unpatentable over May, Huberman, and Official Notice. 16
Claims 34 and 92 stand rejected under 35 U.S.C. § 103(a) as 17
unpatentable over May, Gulati, and Official Notice. 18
ISSUES 19
The issues of obviousness turn primarily on whether May describes the 20
limitation of the at least one element included in the swap term sheet being 21
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based at least on preferences set by the first user for generating swap term 1
sheets, and whether the Examiner made findings to support that. 2
FACTS PERTINENT TO THE ISSUES 3
The following enumerated Findings of Fact (FF) are believed to be 4
supported by a preponderance of the evidence. 5
Facts Related to the Prior Art 6
May 7
01. May is directed to electronic trading so that at the user's 8
workstation, the user may select from a variety of different 9
interfaces that enable the user to follow markets, enter and execute 10
trades, and monitor outstanding and historical orders and 11
executions. May 5:48-61. 12
02. May provides a user preferences interface, such as illustrated in 13
FIGS. 6A and 6B. In FIG. 6A, a Derv Filters tab enables a user to 14
set request-for-price (RFP) filters for viewing different derivative 15
instruments based on the type (i.e., class) of derivative instruments 16
and the currency. The user may also select the manner of 17
presentation (i.e., highlighted or not). In FIG. 6B, an Environment 18
tab enables a user to select viewing options to change the 19
appearance of the display. In regard to the color coding display 20
option, it is noted that the user can select not to have order 21
information color coded by selecting color blind user. In such a 22
case, other means of notation are utilized such as markings or 23
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symbols, as may be desirable if the user is color blind or using a 1
monochrome screen display device. May 17:32-51. 2
03. May Fig. 14A, shows a form that displays the price, quantity, 3
and time frame terms. 4
04. May Fig. 12 shows a form that displays the best bid and best 5
ask data for potential trades. 6
05. Among the financial instruments May displays are interest rate 7
swaps and foreign exchange swaps. May 18:45-58. 8
Huberman 9
06. Huberman is directed to commercial distributed document 10
services using networks. Huberman 1:13-15. 11
Gulati 12
07. Gulati is directed to online auction systems. Gulati 1:9-10. 13
ANALYSIS 14
We are persuaded by the Appellants’ argument that the Examiner made 15
no findings regarding the limitation of the at least one element included in 16
the swap term sheet being based at least on preferences set by the first user 17
for generating swap term sheets. Appeal Br. 9. This limitation occurs in 18
both independent claims 1 and 127. Independent claim 40 contains a 19
limitation that the at least one element selected by the first user for inclusion 20
in the swap term sheet be from a plurality of available elements for 21
specifying terms of an offer and stored for generating swap term sheets. The 22
Examiner made no findings in either the rejection or the response regarding 23
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these limitations. Ans. 3 and 8-9. Thus, the Examiner failed to present a 1
prima facie case. 2
NEW GROUND OF REJECTION 3
The following new ground of rejection is entered pursuant to 4
37 C.F.R. § 41.50(b). Claims 1, 40, and 127 are rejected under 35 U.S.C. 5
§ 103(a) as unpatentable over May. As the Examiner found, receiving the 6
request, communicating a terms sheet, receiving the offer, and 7
communicating the offer are shown by May’s term sheet in Fig. 14A and its 8
related description. Indeed, this is conventional and has not been contended. 9
May explicitly recites swaps among the types of instruments it is directed to. 10
FF 05. 11
May further recites that a user may set a preference for a manner of 12
presentation. FF 02. Thus, all of the elements in May’s Fig. 14A have their 13
presentation based on preferences set by the user for generating all displays, 14
including term sheets. These claims do not specify the nature of the element 15
in the term sheet, and display attributes are elements of which displayed 16
sheets are comprised. Similarly, claims 1 and 127 do not specify the nature 17
of the basis. We find the term “generating” reads on creation for any 18
purpose, and in particular reads on both initial creation and the creation of 19
data for display. When May displays its form in Fig. 14A, May generates the 20
form for display. 21
Claim 40 uses the term “selected” instead of “based”, but May offers a 22
selection of display styles. Similarly, although claim 40 also uses the phrase 23
“for specifying terms”, May uses its display presentation for the manner in 24
which terms are specified. 25
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CONCLUSIONS OF LAW 1
The rejection of claims 1-8, 14, 16-1 7, 23, 27-28, 31-34, 40, and 127-2
163 under 35 U.S.C. § 103(a) as unpatentable over May and Official Notice 3
is improper. 4
The rejection of claims 32 and 90 under 35 U.S.C. § 103(a) as 5
unpatentable over May, Huberman, and Official Notice is improper. 6
The rejection of claims 34 and 92 under 35 U.S.C. § 103(a) as 7
unpatentable over May, Gulati, and Official Notice is improper. 8
The following new ground of rejection is entered pursuant to 37 C.F.R. 9
§ 41.50(b). Claims 1, 40, and 127 are rejected under 35 U.S.C. § 103(a) as 10
unpatentable over May. 11
DECISION 12
To summarize, our decision is as follows. 13
 The rejection of claims 1-8, 14, 16-1 7, 23, 27-28, 31-34, 40, and 127-14
163 under 35 U.S.C. § 103(a) as unpatentable over May and Official 15
Notice is not sustained. 16
 The rejection of claims 32 and 90 under 35 U.S.C. § 103(a) as 17
unpatentable over May, Huberman, and Official Notice is not 18
sustained. 19
 The rejection of claims 34 and 92 under 35 U.S.C. § 103(a) as 20
unpatentable over May, Gulati, and Official Notice is not sustained. 21
 The following new ground of rejection is entered pursuant to 37 22
C.F.R. § 41.50(b). 23
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o Claims 1, 40, and 127 are rejected under 35 U.S.C. § 103(a) as 1
unpatentable over May. 2
Our decision is not a final agency action. 3
In addition to affirming the Examiner's rejection(s) of one or more 4
claims, this decision contains new grounds of rejection pursuant to 37 CFR § 5
41.50(b). 37 CFR § 41.50(b) provides “[a] new ground of rejection pursuant 6
to this paragraph shall not be considered final for judicial review.” This 7
Decision contains a new rejection within the meaning of 37 C.F.R. § 8
41.50(b) (2007). 9
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO 10
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 11
the following two options with respect to the new rejection: 12
(1) Reopen prosecution. Submit an appropriate amendment of 13
the claims so rejected or new evidence relating to the claims 14
so rejected, or both, and have the matter reconsidered by the 15
Examiner, in which event the proceeding will be remanded 16
to the Examiner. . . . 17
(2) Request rehearing. Request that the proceeding be reheard 18
under § 41.52 by the Board upon the same record. . . . 19
Should the Appellants elect to prosecute further before the examiner 20
pursuant to 37 CFR § 41.50(b)(1), in order to preserve the right to seek 21
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection, 22
the effective date of the affirmance is deferred until conclusion of the 23
prosecution before the examiner unless, as a mere incident to the limited 24
prosecution, the affirmed rejection is overcome. 25
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If the Appellants elect prosecution before the Examiner and this does 1
not result in allowance of the application, abandonment or a second appeal, 2
this case should be returned to the Board of Patent Appeals and Interferences 3
for final action on the affirmed rejection, including any timely request for 4
rehearing thereof. 5
No time period for taking any subsequent action in connection with this 6
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 7
1.136(a)(1)(iv) (2007). 8
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REVERSED 12
41.50(b) 13
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