Ex Parte Woodmansey et al

Patent Trials and Appeals Board

May 16, 2019

11084547 - (D) (P.T.A.B. May. 16, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/084,547 03/18/2005
63710 7590 05/20/2019
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Robert J. Woodmansey
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.
99-1005-Cl 9387
EXAMINER
MILEF, ELDA G
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
05/20/2019 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 ROBERT J. WOODMANSEY, PHILIP M. GINSBERG,
and GLENN D. KIRWIN
Appeal2017-004414 1
Application 11/084,5472
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, 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 82-90, 92-113, and 131-153 which constitute all
the claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b ). An Oral Hearing was held on March 26, 2019.
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Appeal Br.," filed
September 30, 2016) and Reply Brief ("Reply Br.," filed January 17, 2017),
and the Examiner's Answer ("Ans.," mailed November 16, 2016) and Final
Office Action ("Final Act.," mailed August 20, 2015).
2 Appellants identify "BGC Partners, Inc." as the real party in interest.
Appeal Br. 2.
Appeal2017-004414
Application 11/084,547
CLAIMED INVENTION
Appellants' claims relate "to systems and methods for linking orders
in electronic trading systems," and more particularly "to systems and
methods which enable traders to link trading of goods, services, financial
instruments, and commodities in electronic trading systems" (Spec. 1: 10-
15).
Claims 82 and 134 are the independent claims on appeal. Claim 82,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
82. A method comprising:
[a] at a trader's workstation computer providing an
interface to at least one electronic trading system;
[b] receiving, via a processor, into the workstation from a
trader on a remote device:
[i] selections of a first item and at least one second
item that are traded in the at least one electronic trading
system, wherein the first item is different from the at least
one second item;
[ii] selections of at least one linking parameter that
specifies a linking relationship between the first item and
the at least one second; and
[iii] a trader-selected trigger event specifying an
occurrence among data, the data to be received from the at
least one electronic trading system that is monitored by the
workstation;
[iv] in which the remote device and the processor
are in electronic communication over a network;
[ c] at the workstation, monitoring, via the processor, data
received from the at least one electronic trading system to detect
the trader-selected trigger event; and
[ d] on detection of the trader-selected trigger event,
generating, via the processor, the linking relationship between
the first item and the at least one second item and controlling, via
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the processor, one or more orders for the first item and the at least
one second item on the at least one electronic trading system.
REJECTIONS
Claims 82-90, 92-113, and 131-153 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
Claims 82-90, 92-101, 103-112, and 131-153 are rejected under 35
U.S.C. § I03(a) as unpatentable over Rickard (US 6,112,189, iss. Aug. 29,
2000) and Neyman (US 7,333,952 Bl, iss. Feb. 19, 2008).
Claims 102 and 113 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Rickard, Neyman, and Korhammer (US 6,278,982 Bl, iss.
Aug. 21, 2001).
ANALYSIS
Patent-Ineligible Subject Matter
Independent Claim 82
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. However, the Supreme Court has long interpreted 35
U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural
phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS
Bankint'l, 573 U.S. 208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See id. at 219
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("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Gottschalk, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is "directed to" an abstract idea, we tum to the second
step of the Mayo/Alice framework, where "we must examine the elements of
the claim to determine whether it contains an 'inventive concept' sufficient
to 'transform' the claimed abstract idea into a patent-eligible application."
Alice, 573 U.S. at 221 ( quotation marks omitted). "A claim that recites an
abstract idea must include 'additional features' to ensure 'that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea]."' Id.
(alterations in original) ( quoting Mayo, 566 U.S. at 77). "[M]erely
requir[ing] generic computer implementation[] fail[ s] to transform that
abstract idea into a patent-eligible invention." Id.
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The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance"). Under that guidance, we
first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application, i.e., that "apply, rely on, or use the judicial exception
in a manner that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception." See 2019 Revised Guidance, 84 Fed. Reg. at 53 ; see
also MPEP § 2106.05(a}-(c), (e}-(h).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See 2019 Revised Guidance.
Appellants argue that the Examiner's rejection is in error because the
Examiner fails to establish a prima facie case of subject matter ineligibility
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(see Appeal Br. 6-15; see also Reply Br. 2-8). Appellants' arguments are
not persuasive.
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
analyzes the claims using the Mayo/Alice two-step framework (see Final
Act. 10-18; see also Ans. 5-13). The Examiner determined that the claims
are directed to "enabling traders to link two or more items for trading and
specify parameters for controlling placement of orders for those items"
(Final Act. 2). The Examiner also determined that the claims are directed to
"linking trade orders by enabling a trader to select two or more items that are
to be linked and specify[ing] linking parameters for those items" (Ans. 2),
which the Examiner considers to be an abstract idea, inasmuch as the claims
are similar to "economic concepts found by the courts to be abstract ideas"
(id. at 3). The Examiner further determined that independent claim 82 does
not include additional elements or a combination of elements sufficient to
transform the claim into a patent-eligible application of the abstract idea (see
Final Act. 2-3; see also Ans. 3--4). The Examiner, thus, has followed the
two-part framework specified by the Supreme Court in Mayo/Alice
consistent with Office guidelines.
In this regard, the Examiner has articulated the reasons for the
rejection and has notified Appellants of the reasons for the rejection
"together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application."
35 U.S.C. § 132. And we find that, in doing so, the Examiner sets forth a
prima facie case of subject matter ineligibility. See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011); Chester v. Miller, 906 F.2d 1574, 1578 (Fed.
Cir. 1990) (Section 132 "is violated when a rejection is so uninformative that
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it prevents the applicant from recognizing and seeking to counter the
grounds for rejection."). And, when viewed through the lens of the 2019
Revised Guidance, the Examiner's analysis depicts the claimed subject
matter as one of the ineligible "[c]ertain methods of organizing human
activity" that include "fundamental economic principles or practices
(including hedging, insurance, mitigating risk)" and "commercial or legal
interactions (including ... sales activities or behaviors ... )" under
Prong One of Revised Step 2A. See 2019 Revised Guidance, 84 Fed. Reg.
at 51-52.
In response to the Examiner's determination, Appellants argue that the
Examiner "has not properly identified an alleged abstract idea," "provides
only conclusory opinions that the alleged abstract idea is abstract," and thus,
erred in determining that the present claims are directed to an abstract idea
(see Appeal Br. 7-8; see also Reply Br. 2--4). We cannot agree.
Under the first prong of step 2A of the 2019 Revised Guidance, we
first determine if the claims recite an abstract idea. In this regard, we note
that the Specification is titled "LINKING ORDERS IN ELECTRONIC
TRADING SYSTEMS," and states that the disclosure relates to "systems
and methods for linking orders in electronic trading systems" (Spec. 1: 10-
12). The Background section of the Specification identifies that "[m]odem
day trading includes not only the buying and selling of a single type of item,
but also more complex transactions involving exchanges of a combination of
the same or different types of items" (id. at 2: 18-21 ). According to the
Specification, "[t ]he trading of combinations of items in this way facilitates
arbitrage, hedging, and speculation" (id. at 2:23-25), but "because such
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combinations of items may have very complex relationships, there is a need
to automate the trading of combinations of items" (id. at 2:26-30).
Consistent with this description, independent claim 82 recites broadly
"[a] method" including steps for "providing an interface to at least one
electronic trading system," "receiving ... selections of a first item and at
least one second item that are traded in the at least one electronic trading
system," receiving "selections of at least one linking parameter that specifies
a linking relationship between the first item and the at least one second
[item]," and receiving "a trader-selected trigger event specifying an
occurrence among data." The method includes additional steps for
"monitoring ... data received from the at least one electronic trading system
to detect the trader-selected trigger event," and "on detection of the trader-
selected trigger event, generating ... the linking relationship between the
first item and the at least one second item and controlling ... one or more
orders for the first item and the at least one second item on the at least one
electronic trading system."
Upon reviewing the Specification and the claim as whole, as
summarized above, we agree with the Examiner that independent claim 82 is
directed broadly to "enabling traders to link two or more items for trading
and specify parameters for controlling placement of orders for those items."
Here, independent claim 82 receives information (i.e., selections of a first
item, at least one second item, at least one linking parameter, and a trigger
event (limitation [b])), and then monitors data (i.e., received from the at least
one electronic trading system (limitation [ c ])) to control ordering (limitation
[ d]). Thus, it is clear that independent claim 82 recites a form of hedging or
sales activities/behaviors ( cf Spec. 1: 10-2:30), and as such, recites
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fundamental economic principles or practices and/or commercial
interactions that, under the Revised Guidance, fall under the category of
"certain methods of organizing human activity." Accordingly, independent
claim 82 recites an abstract idea. See OIP Techs., Inc. v. Amazon.com, Inc.
788 F.3d 1359, 1362-63 (Fed. Cir. 2015)(concluding that claimed concept
of "offer-based price optimization" is an abstract idea "similar to other
'fundamental economic concepts' found to be abstract ideas by the Supreme
Court and this court); Bancorp Servs., L.L.C v. Sun Life Assur. Co. of
Canada (U.S.), 687 F.3d 1266, 1277-78 (Fed. Cir. 2012) (Holding that
performance by computer of operations that previously were performed
manually or mentally, albeit less efficiently, does not convert a known
abstract idea into eligible subject matter).
Having concluded that claim 82 recites a judicial exception, i.e., an
abstract idea, we tum to the second prong of step 2A of the 2019 Revised
Guidance and determine whether the claims recite a practical application of
the recited judicial exception. Here we look to see if, for example, (i) any
additional elements of the claims reflects an improvement in the functioning
of a computer or to another technological field, (ii) an application of the
judicial exception with, or by use of, a particular machine, (iii) a
transformation or reduction of a particular article to a different state or thing
(iv) or a use of the judicial exception in some other meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment. See 2019 Revised Guidance, 84 Fed. Reg. at 55;
See also MPEP § 2106.05(a}-(c), (e}-(h).
We find no indication in the Specification, nor do Appellants direct us
to any indication, that the steps recited in independent claim 82 invoke any
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assertedly inventive programming, require any specialized computer
hardware or other inventive computer components, i.e., a particular machine,
or effects a transformation or reduction of a particular article to a different
state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention "appl[ies ], rel[ies] on, or us[ es] the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception." See 2019 Revised Guidance, 84 Fed. Reg. at 55.
Appellants argue that independent claim 82 is not directed to an
abstract idea because it is similar to the Federal Circuit decisions in DDR
Holdings, LLC v. Hotels, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). More
particularly, Appellants argue:
the present claims solve a problem rooted in computer
technology to improve the functionality of electronic trading
systems by enabling traders to be linked according to selected
parameters and then automatically controlled according to those
parameters responsive to a selected trigger event. The claimed
solution is necessarily implemented in a networked computer
environment due to the multiple network nodes and processing
and display elements from which multiple orders are received,
communicated, and managed.
(Appeal Br. 8; Reply Br. 8). We cannot agree.
Instead, we agree with the Examiner that the additional limitations of
a "trader's workstation computer, an interface, a processor, []a remote
device, and electronic trading system" (Ans. 4) simply allow a generic
computer to perform the claimed operations using generic computer
functions (cf Spec. 5:9---6:29). Moreover, Appellants have not shown how
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the claimed subject matter is rooted in technology given that the
Specification describes only the use of generic computer equipment used in
routine, conventional, and generic manner.
In this regard, we note that the Specification identifies that
"workstations 102 and 104 may be personal computers, laptop computers,
mainframe computers, dumb terminals, data displays, Internet browsers,
Personal Digital Assistants (PDAs), two-way pagers, wireless terminals,
portable telephones, etc., or any combination of the same" (Spec. 5:17-22),
"[p ]rocessor 106, and any additional processors, may be any suitable
circuitry or devices capable of processing data such as microprocessors,
personal computers, network servers, mainframe computers, dedicated
computer systems, etc." (id. at 5:29-33), "[e]ach of networks 108 and 110
may be any suitable data network for communicating data between
workstations 102 and 104 and processor 106, such as a local area network, a
wide area network, the Internet, an Intranet, a wireless network, a hard wired
connection, a dial-up network, etc., or any combination of the same" (id.
6:3-8), and "[n]etwork interface 128 may be any suitable interface and/or
computer network that facilitates communication between processor 106 and
external trading systems 130" (id. at 6:27-29).
Appellants argue that claim 82 is not directed to an abstract idea
pursuant to the Federal Circuit decision in McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) (see Reply Br. 4--6). More
particularly, Appellants argue "that the combination of elements recited in
the amended claims perform functions that are not generic computer
functions" (Reply Br. 5 ( emphases omitted)). However, independent claim
82, unlike the claims found non-abstract in prior cases, uses generic
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computer technology to provide, receive, and monitor/detect data, and then
generate/control a linking relationship between the data, and does not recite
an improvement to a particular computer technology. See, e.g., McRO, 837
F .3d at 1314--15 (Fed. Cir. 2016) (finding claims not abstract because they
"focused on a specific asserted improvement in computer animation") ( cf
Spec. 4:20-26, 5: 17-22, 5:29-33, 6:3-8, 6:27-29, 8:5-7, 9:32-3).
Appellants last argue that the claims are patent-eligible because "the
claims are directed toward specific and narrow embodiments including
meaningful limitations that in no way 'tie up' or pre-empt the alleged
abstract ideas" (Appeal Br. 12-13). However, a lack of complete
preemption does not make the claims any less abstract. See buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); see also Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
("While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility."); see also
OIP Techs., 788 F.3d at 1362-1363 ("[T]hat the claims do not preempt all
price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.").
Turning to Step 2B of the of the 2019 Revised Guidance, we
determine whether the additional elements ( 1) add a specific limitation or
combination of limitations that is not well-understood, routine, and
conventional activity in the field, which is indicative that an inventive
concept may be present or (2) simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception, which is indicative that an
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inventive concept may not be present. See 2019 Revised Guidance, 84 Fed.
Reg. at 56.
Appellants argue that "independent claims 82 and 134 do, indeed,
recite elements that alone and/or in combination are significantly more than
any alleged abstract idea" (Appeal Br. 10-11; see also Reply Br. 4--7).
However, other than merely reproducing portions of independent claim 82
(see Appeal Br. 10-11 ), Appellants provide no further argument, such as
how the elements are arranged in a non-generic or unconventional manner
such that it is a technical improvement over prior art ways of "linking trade
orders by enabling a trader to select two or more items that are to be linked
and specify linking parameters" (Ans. 3--4). See BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016).
Finally, to the extent Appellants maintain that the claimed invention is
patent-eligible, i.e., that claim 82 amounts to "significantly more" than an
abstract idea, because Appellants contention "that the instant rejections
under§ 103 are improper" (Reply Br. 5---6), Appellants misapprehend the
controlling precedent.
Neither a finding of novelty nor a non-obviousness determination
automatically leads to the conclusion that the claimed subject matter is
patent-eligible. Although the second step in the Mayo/Alice framework is
termed a search for an "inventive concept," the analysis is not an evaluation
of novelty or non-obviousness, but rather, a search for "an element or
combination of elements that is 'sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice, 573 U.S. at 217-18 ( citation omitted).
"Groundbreaking, innovative, or even brilliant discovery does not by itself
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satisfy the § 101 inquiry." Ass 'n for Molecular Pathology vs. Myriad
Genetics, Inc., 569 U.S. 576, 591(2013). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90; see also Diamond, 450 U.S. at 188-89 ("The
'novelty' of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the§ 101 categories of possibly patentable subject matter.").
Remaining claims 83-90, 92-113, and 131-153
Independent claim 134 recites generally an apparatus including a
computer processor programmed for performing the steps of receiving
selections of a first item, at least one second item, at least one linking
parameter, and a trigger event (limitation [b ]), monitoring data (limitation
[ c ]), and controlling one or more orders based on the monitoring (limitation
[ d]). Appellants request that each claim be considered separately (Appeal
Br. 14). However, Appellants have not provided any separate arguments for
independent claim 134 (see Appeal Br. 6-14; see also Reply Br. 2-8).
As such, we are not persuaded that the Examiner erred in rejecting
independent claim 134 under 35 U.S.C. § 101 for the same reasons as to
independent claim 82, supra.
Regarding the remaining claims, Appellants do not direct our attention
to any specific limitations in the dependent claims that would alter our
analysis. We find that dependent claims 83-90, 92-113, 131-133, and 135-
153 merely describe further characteristics of the underlying concept and
lack additional elements that would render the claims patent-eligible. As
such, we agree with the Examiner that the dependent claims "do not remedy
the deficiencies of the independent claims" (Ans. 8). The dependent claims
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merely further describe characteristics of the at least one order, the first item,
the at least one second item, the location and sequence of order submissions,
the linking parameter, and the trigger event, which we discern sit squarely
within, and does not alter appreciably, the broader concept of "enabling
traders to link two or more items for trading and specify parameters for
controlling placement of orders for those items."
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 101 of claims 82-90, 92-113, and 131-153 for the reasons
discussed above.
Obviousness
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claims 82 and 134 under 35 U.S.C. § 103(a) because
Neyman, upon which the Examiner relies, "do[es] not disclose or suggest
'on detection of the trader-selected trigger event, generat[ing] ... the linking
relationship between the first item and the at least one second item," as
recited by limitation [ d] of independent claim 82, and similarly recited by
independent claim 134 (Appeal Br. 18-20 (emphases omitted); Reply Br. 9-
10).
The Examiner maintains the rejection is proper, and cites column 3,
lines 27-31 and 55---65, column 9, lines 9-13, and column 10, lines 16-26
and 32-37 of Neyman as disclosing the argued limitation (see Final Act. 5,
13). In the Examiner's Answer, the Examiner also cites column 3, lines 6-
15 and column 5, line 55 through column 6, line 2 ofNeyman as disclosing
the argued limitation (see Ans. 11 ).
We have reviewed the cited portions of Neyman, and agree with
Appellants that none of the cited portions of Neyman discloses or suggests
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the argued limitation. Neyman is directed to electronic brokerage "systems
in which counterparties trade anonymously within fixed credit limits"
(Neyman, col. 1, 11. 6-8). Although we agree with the Examiner that
Neyman discloses trigger events and "automatically submit[ting] an order
once the market reaches a given condition" (Ans. 11 (citing Neyman, col. 5,
1. 55 - col. 6, 1. 2) (emphases omitted)), we cannot agree with the Examiner
that Neyman' s "means for matching and executing joint execution orders
comprising a plurality of linked orders" (see Final Act. 5; see also Ans. 11
( citing Neyman, col. 3, 11. 27-31) discloses or suggests "generating, via the
processor, the linking relationship," based upon "detection of the trader-
selected trigger event," as called for by limitation [ d] of independent claims
82 and 134. Instead, we agree with Appellants that the Examiner has not
shown how "Ne[y]man discloses or suggests the act of 'generating ... the
linking relationship' occurring after detection of the trader-selected trigger
event" (Reply Br. 9 ( emphasis omitted); Appeal Br. 18).
More particularly, we agree with Appellants that in Neyman, the
"linking relationship is generated before the trigger event occurs" (Reply Br.
10 ( emphases omitted)), whereas limitation [ d] requires that the linking
relationship be generated after the trigger event occurs, i.e., "on detection of
the trader-selected event, generating ... the linking relationship." In making
this determination, we note that Neyman discloses that "[a] trader may
program his terminal automatically to submit an order once the market
reaches a given condition" (Neyman, col. 5, 1. 55---col. 6, 1. 2). Neyman
further discloses that "[t]he deal process begins with one or more traders
submitting orders ... with instructions to buy or sell with specific
restrictions, such as price and amount" (id. at col. 7, 11. 50-53) and that
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"[ w ]hen the deal matching process is completed ... the deal execution
process begins" (id. at col. 10, 11. 16-17). The Examiner does not rely on
Rickard to address this limitation (see Final Act. 5-6). Thus, we are
persuaded by Appellants' argument that the combination of Rickard and
Neyman fails to disclose or suggest the argued limitation.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 82 and 134 under 35 U.S.C. § 103(a).3 For the same
reasons, we also do not sustain the Examiner's rejection of claims 83-90,
92-101, 103-112, 131-133, and 135-153, which depend therefrom. On the
same basis, we do not sustain the obviousness rejection of dependent claims
102 and 113, as the additional reference, Korhammer, is not cited to remedy
the aforementioned deficiency.
DECISION
The Examiner's rejection of claims 82-90, 92-113, and 131-153
under 35 U.S.C. § 101 is affirmed.
The Examiner's rejections of claims 82-90, 92-113, and 131-153
under 35 U.S.C. § 103(a) are reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
3 Because Neyman fails to disclose or suggest the limitations for which it
was cited by the Examiner, we do not consider the availability of Neyman as
a valid prior art reference at this time (see Appeal Br. 17-18; see also Reply
Br. 9).
17