Ex Parte Voigt

Patent Trial and Appeal Board

Dec 19, 2016

12940418 (P.T.A.B. Dec. 19, 2016)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/940,418 11/05/2010 Christian VOIGT 10-620-US 7451
98804 7590 12/21/2016
ReeH Smith T T P
EXAMINER
P.O. Box 488 KHATTAR, RAJESH
Pittsburgh, PA 15230
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
12/21/2016 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):
ptoipinbox @reedsmith.com
mskaufman @reedsmith. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN VOIGT
Appeal 2014-0057241
Application 12/940,4182
Technology Center 3600
Before MICHAEL C. ASTORINO, TARA L. HUTCHINGS, and
MATTHEW S. MEYERS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 16, 17, and 19—25. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed Dec.
16, 2013) and Reply Brief (“Reply Br.,” filed Apr. 8, 2014), and the
Examiner’s Answer (“Ans.,” mailed Feb. 10, 2014) and Non-Final Office
Action (“Non-Final Act.,” mailed May 20, 2013).
2 Appellant identifies Deutsche Borse AG as the real party in interest. App.
Br. 1.
Appeal 2014-005724
Application 12/940,418
CLAIMED INVENTION
Appellant’s claimed invention “relates to computer systems and
methods for generating orders to be executed in an electronic exchange and
to computer systems and methods for executing orders in an electronic
exchange.” Spec. 11.
Claims 16 and 21 are the independent claims on appeal. Claim 16,
reproduced below, is illustrative:
16. A computer-implemented method for a derivatives
trader at an electronic exchange to reduce the risk of having
incorrect inventory in an underlying, comprising:
a computer processor of the electronic exchange writing
data into a data storage memory of a computer system of the
electronic exchange representing an order book, the data
indicating characteristics of an order to buy or sell the
underlying,
wherein, if said order is an order to buy the underlying,
said characteristics comprise a minimum buy price and a
maximum buy price, and
wherein, if said order is an order to sell the underlying,
said characteristics comprise a minimum sell price and a
maximum sell price.
REJECTIONS
Claims 19 and 24 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.3
3 The Examiner has withdrawn the rejection of claims 16, 20, and 25 under
35 U.S.C. § 112, second paragraph. Ans. 2. We treat the rejection of claim
17, which depends from claim 16, as being withdrawn by the Examiner as
well). See Non-Final Act. 3^4 (providing rationale for the rejection of
independent claim 16, but not dependent claim 17); see also Ans. 2^4
(failing to identify claim 17 as subject to rejection under 35 U.S.C. § 112,
second paragraph).
2
Appeal 2014-005724
Application 12/940,418
Claims 16, 19—21, and 23—25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Burkhardt (US 2007/0219898 Al, pub. Sept. 20, 2007).
Claims 17 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Burkhardt and Barker (US 2007/0219898 Al, pub. Sept.
20, 2007).
Claims 16, 21, and 23 are alternatively rejected under 35 U.S.C.
§ 102(b) as anticipated by Burkhardt.
ANALYSIS
Indefiniteness
Dependent Claims 19 and 24
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting claims 19 and 24 under 35 U.S.C. § 112, second paragraph. App.
Br. 5—9; see also Reply Br. 2-4.
The Examiner finds that
In claim 19, writing data into a data storage memory of a
computer system by a computer processor (as recited in claim
16) would be questionable since the computer processor is
associated with a front-end computing device (as per claim 19).
This renders the claim indefinite.
Non-Final Act. 3. In the Answer, the Examiner further finds that “[t]he
claim does not clearly define the presence of two computers.” Ans. 3.
However, we agree with Appellant that a person of ordinary skill in
the art would understand what is claimed when claims 19 and 24 are read in
light of the Specification, i.e., that the computer processor is part of a front-
end computing device that is in communication with the computer system,
wherein said data is derived from order data transmitted from the front end
computing device to the computer system. Reply Br. 2—4.
3
Appeal 2014-005724
Application 12/940,418
Therefore, we do not sustain the Examiner’s rejection of claims 19
and 24 under 35 U.S.C. § 112, second paragraph. See Orthokinetics, Inc. v.
Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test
for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.”).
Obviousness
Independent Claims 16 and 21 and Dependent Claims 19, 20, and 23—25
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting claim 16 under 35 U.S.C. § 103(a) because Burkhardt does not
disclose or suggest that “if said order is an order to buy the underlying, said
characteristics comprise a minimum buy price and a maximum buy price,”
and “if said order is an order to sell the underlying, said characteristics
comprise a minimum sell price and a maximum sell price,” as recited in
claim 16, and similarly recited in claim 21. App. Br. 9—16; see also Reply
Br. 4—9. The Examiner relies on paragraphs 11—14 of Burkhardt as
disclosing the argued limitations. Final Act. 5; see also Ans. 4—6.
Burkhardt is directed to automatic order processing and execution in
conjunction with live floor auction markets. Burkhardt 12. Burkhardt
describes receiving a broker interest to sell a security at a first price with a
discretion price range, and receiving an order to buy with an order trade
price. Id. 111. If the received order trade price (i.e., order to buy) is less
than the first price (i.e., interest to sell) but within the discretion price range,
then the system may trade at least part of the broker interest against the order
(e.g., at the order trade price) even though the order trade price is less than
the first price. Id. However, if the order trade price is less than the first
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Appeal 2014-005724
Application 12/940,418
price and not within the discretion price range, then no part of the broker
interest is traded. Id. 1 12.
In another embodiment, the system receives broker interest to buy a
security at a first price with a discretion price range, and receives an order to
sell with an order trade price. Id. 113. The system determines whether the
order trade price (i.e., offer to sell) is greater than the first price (i.e., interest
to buy) and within the discretion price range. Id. If so, the system may trade
the broker interest against the order (e.g., at the order trade price) even
though the order trade price is higher than the first price. Id. H 13—14. But
if the order trade price is greater than the first price and not within the
discretionary range, the broker interest is not traded against the order. Id.
114.
The Examiner identifies Burkhardf s first price as the claimed
minimum buy price in an order to buy and as the claimed maximum sell
price in an order to sell. See Final. Act. 7. However, the Examiner does not
identify, and we do not find, anything in the cited portions of Burkhardt that
discloses or suggests that the first price constitutes a minimum buy price on
an order to buy or a maximum sell price on an order to sell. To the contrary,
Burkhardt describes accepting the highest price that someone is willing to
pay to buy the security and the lowest offer a seller is willing to sell the
security, suggesting that a transaction to sell occurs when the order trade
price is greater than the first price (i.e., the first price is not a maximum sell
price) and a transaction to buy occurs when the order trade price is less than
the first price (i.e., the first price is not a minimum buy price). See, e.g.,
Burkhardt 1101.
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Appeal 2014-005724
Application 12/940,418
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 16 and 21 and dependent claims 19, 20, and 23—25
under 35 U.S.C. § 103(a).
Dependent Claims 17 and 22
Claims 17 and 22 each depends claim 16. The rejections of claims 17
and 22 do not cure the deficiency in the Examiner’s rejection of independent
claim 16. Therefore, we do not sustain the rejection of dependent claims 17
and 22 for the same reasons set forth above with respect to the independent
claim 16.
Anticipation
Independent Claims 16 and 21 and Dependent Claim 23
We are persuaded for the reasons set forth above that the Examiner
erred in rejecting claims 16, 21, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Burkhardt. We do not sustain the Examiner’s rejection of
claims 16, 21, and 23 under 35 U.S.C. § 102(b) as anticipated by Burkhardt
for substantially the same reasons.
DECISION
The Examiner’s rejection of claims 19 and 24 under 35 U.S.C. § 112,
second paragraph is reversed.
The Examiner’s rejections of claims 16, 17, and 19—25 under 35
U.S.C. § 103(a) are reversed.
The Examiner’s rejection of claims 16, 21, and 23 under 35 U.S.C.
§ 102(b) is reversed.
REVERSED
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