Johnson, James C.

Patent Trials and Appeals Board

May 20, 2020

2019003350 (P.T.A.B. May. 20, 2020)

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.
11/686,647 03/15/2007 James C. Johnson 07-6265 6734
63710 7590 05/20/2020
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
PRESTON, JOHN O
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
05/20/2020 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):
lkorovich@cantor.com
patentdocketing@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 JAMES C. JOHNSON
____________

Appeal 2019-003350
Application 11/686,647
Technology Center 3600
____________

Before BRUCE T. WIEDER, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s
final rejection of claims 1–6, 12–17, 40, and 42–54. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as BGC
PARTNERS, INC. (Appeal Br. 3.)
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CLAIMED SUBJECT MATTER
Appellant’s “invention relates generally to electronic error detection
and recovery and more specifically to a system and method for error
detection and recovery in an electronic trading system.” (Spec. 1, ll. 6–8.)
Claims 1, 12, 43, and 46 are the independent claims on appeal.
Claim 1 is illustrative. It recites (emphasis added):
1. An apparatus comprising a nontransitory, machine-
readable memory storing programs that, when executed, are
operable to cause one or more computers of an electronic trading
system for communicating with interfaces of devices over a
communication network, the appartus [sic] to:
store in a memory of a computer of the electronic trading
system a plurality of profile information describing trader users
of the system and devices used by the traders, the profile
information for a trader designating two device addresses for
communicating with the trader, a trader’s first address to be
used by the trading system as an address for communication of
trading commands and a trader’s second address to be used by
the trading system as an address for communication of alerts
relating to communications failures to the trading command
address;
while processing orders in the electronic trading system,
to maintain in a memory of the trading system an order log that
records the trading status of orders of respective traders received
from the traders at their respective trading command addresses,
and to monitor at a network sensor of the trading system for
network communication between network interfaces of the
network sensor and network interfaces of the devices of the
traders at the traders’ trading command addresses for
communication failures;
in response to the network sensor detection of a
communication failure at a trader’s trading command address, to
maintain communication with the failed trader, after the
communication failure over the trading command address,
initiate communication between the failed trader and the
electronic trading system via the alert address that includes to
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transmit an alert message to the alert address for the failed
trader, the alert reporting trading status of orders of the failed
trader at the time of the communication failure and/or reflecting
trading of orders of the failed trader after the communication
failure.

REJECTIONS2
Claims 1–3, 12–14, 42, 44, 46, 47, 50–52, and 54 are rejected under
35 U.S.C. § 103(a) as unpatentable in view of Hawkins (US 5,497,317, iss.
Mar. 5, 1996) and Ordish (US 5,727,165, iss. Mar. 10, 1998).
Claims 4–6 and 15–17 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Hawkins, Ordish, and Evans (US 2002/0128954 A1,
pub. Sept. 12, 2002).
Claims 40 and 53 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Hawkins, Ordish, and Alam (US 6,336,124 B1, iss.
Jan. 1, 2002).
Claims 43, 45, 48, and 49 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Hawkins, Ordish, and Boggs (US 5,530,696, iss.
June 25, 1996).

ANALYSIS
§ 103(a) rejections of claims 1–6, 12–17, 40, and 42–45
Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at

2 The rejection of claims 1–6, 12–17, 40, and 42–54 under 35 U.S.C. § 101
was withdrawn. (Answer 3.)
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issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)).
With regard to the scope and content of the prior art, the Examiner
finds that Hawkins teaches
the profile information for a trader designating two device
addresses for communicating with the trader, a trader’s first
address to be used by the trading system as an address for
communication of trading commands and a trader’s second
address to be used by the trading system as an address for
communication of alerts relating to communications failures to
the trading command address.

(Final Action 6–7 (citing Hawkins, col. 4, ll. 40–60, col. 5, ll. 25–50).) The
Examiner also finds that Ordish teaches “after the communication failure
over the trading command address, initiate communication between the
failed trader and the electronic trading system via the alert address that
includes to transmit an alert message to the alert address for the failed
trader.” (Id. at 7 (citing Ordish col. 6, ll. 25–55).)
Appellant disagrees and argues that “[t]he cited portions of Hawkins
fail to disclose or suggest ‘a trader’s second [device] address . . . for
communication of alerts.’” (Appeal Br. 20 (emphasis omitted) (brackets and
ellipsis in original).) Appellant also argues that “[t]he cited portions of
Ordish fail to disclose or suggest transmitting an alert message from a
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computer of an electronic trading system to an alert device address of a
trader.” (Id. at 21 (emphasis omitted).)
Hawkins teaches “[a] security trade settlement device.” (Hawkins,
Abstract.) Specifically, Hawkins teaches that “security trading participants
12, 14, 16 each have computers, terminals, input/output devices, transceivers
or the like (not shown) for transmitting and receiving messages and
information, e.g., by modem, over the communication links.” (Id., col. 4,
ll. 40–44.) Hawkins further discloses that “[e]ach of these terminals
includes a unique name or acronym identifying it as the transmitter or
recipient of messages over the system” (id., col. 4, ll. 46–49), and that “a
particular participant may have numerous system terminals linked together
by a LAN or otherwise” (id., col. 4, ll. 61–62). In other words, the cited
portions of Hawkins teach that a security trading participant, e.g., a trader,
may have two or more device addresses. However, we do not see where the
cited portions of Hawkins teach using a “trader’s first address for
communication of trading commands” and using the “trader’s second
address . . . as an address for communication of alerts relating to
communication failures,” as recited in claim 1. (See Final Action 6–7.)
Ordish teaches “matching systems for effectuating trades of trading
instruments through automatic matching.” (Ordish, col. 1, ll. 25–27.) In
relevant part, Ordish teaches “a central station with two client keystations.”
(Id., col. 5, ll. 16–17.) By way of example, Ordish teaches that client A (at
keystation A) can make an offer to sell that is sent to the central station (i.e.,
the host computer) and that “is anonymously broadcast . . . to all clients or
keystations, including client A (KS A) who made the offer and client B
(KS B), by the host computer.” (Id., col. 5, ll. 59–67.) If client B chooses to
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make a counter-offer, a message is sent from keystation B (KS B) to the host
and the host sends the message to KS A. (Id., col. 5, l. 67–col. 6, l. 7.)
KS A responds with a trade acknowledgement message to the host that is
relayed to KS B. (Id., col. 6, ll. 8–24.) Receipt of these acknowledgement
messages at KS A and KS B start timers TA (at KS A) and TB (at KS B).
(Id.)
The timers TA and TB preferably have 15 second periods,
by way of example, although any other desired timing period
may be chosen. At client station A (KS A), if a confirmed trade
message 9 is received within this predetermined period, it simply
conventionally causes a conventional store and print device (SP)
and/or display 202, 204 to store and print the bargain or trade as
confirmed and/or to display a confirmed trade status message on
the display 202, 204 at the respective keystations KS A, KS B.
If the timer reaches the end of its predetermined period before a
confirmed trade message 9 has been received, then, preferably
the time-out signal is fed firstly to the store and print device (SP)
and/or display 202, 204, where it causes the device to store and
print and/or display the trade as “unconfirmed” and secondly to
the set status device where the status is set to “unconfirmed”
which activates an associated alarm to warn the client at the
appropriate keystation of the unconfirmed trade, as shown by
way of example, in the connections of FIG. 1 and the message
flow chart of FIG. 3. If in the above example, the “confirmed
trade” message is received after the end of the predetermined 15
second period, the message preferably acts as described above
when the message is received within the predetermined 15
second period, but also resets the ‘set status’ device from
“unconfirmed” to “confirmed” which de-activates the alarm and
causes a “late confirmed trade” message to be displayed at 202,
204.

(Id., col. 6, ll. 30–55 (emphasis added); see also id. Fig. 1.) In short, the
cited portions of Ordish teach detecting a failure to timely receive a trade
confirmation message, e.g., detecting a communication failure, and, upon
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detection, displaying a message, i.e., an alert message, on the trader’s
terminal. Thus, in the cited portions of Ordish, the alert message is
displayed on the same terminal where the confirmation message would have
been displayed. We do not see where the cited portions of Ordish teach
sending commands to a trader’s first device address and, after detecting a
communication failure at the first device address, sending an alert message
to that trader’s second device address. (See Final Action 7.)
The Examiner determines:
It would have been obvious to one of ordinary skill in the
art at the time the invention was made to combine the elements
cited in Hawkins with the elements as taught by Ordish because
the claimed invention is merely a combination of old elements,
and in the combination each element merely would have
performed the same function as it did separately with predictable
results.

(Final Action 7–8.) But the Examiner does not sufficiently explain why a
combination of “the elements cited in Hawkins with the elements as taught
by Ordish” would have made obvious a system using a “trader’s first address
for communication of trading commands” and using the “trader’s second
address . . . as an address for communication of alerts relating to
communication failures,” as recited in claim 1.
Accordingly, we will reverse the rejection of claim 1. Independent
claims 12 and 43 contain similar language and the citations to the additional
references relied upon in rejecting independent claim 43 and the associated
dependent claims do not cure the deficiency discussed above. Specifically,
we will reverse the rejections of independent claims 12 and 43, and
dependent claims 2–6, 13–17, 40, 42, 44, and 45.

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§ 112, second paragraph, new ground of rejection of claims 46–54
Independent claim 46 recites (emphasis added):
46. A method for an electronic trading system for
communicating with interfaces of devices over a communication
network, the method comprising:
via a computer of an electronic trading system receiving,
and in a nontransitory, machine-readable memory of the
computer storing, profile information describing trader users of
the system and device addresses used by the traders, the profile
information including trader-specified criteria for detecting an
alert condition of respective devices;
while processing orders in the electronic trading system,
via a computer maintaining in a nontransitory, machine-readable
memory of the trading system an order log that records the
trading status of orders of respective traders received from the
traders at their respective trading command addresses, and
monitoring at a network sensor of the trading system for network
communication between network interfaces of the network
sensor and network interfaces of the workstations of the traders
at the trader’s trading command addresses for alert conditions
specified in trader profile information; and
on the network sensor detecting an alert condition at a
trader’s trading command address as specified in the profile
information, to maintain communication with the failed trader
after the communication failure over the trading command
address, initiate communication between the failed trader and the
electronic trading system via the alert address that includes, via
a computer, transmitting an alert message to the alert address for
the failed trader, the alert reporting trading status of orders of the
failed trader at the time of the communication failure and/or
reflecting trading of orders of the failed trader after the
communication failure.

Dependent claim 47 recites (emphasis added):
47. The method of claim 46:
the trader’s profile information designating two device
addresses for communicating with the trader, a trader’s first
address being used by the trading system as an address for
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communication of trading commands and a trader’s second
address being used by the trading system as an address for
communication of alerts relating to communications failures to
the trading command address;
while processing orders in the electronic trading system,
monitoring workstations of the traders at the traders’ trading
command addresses for communication failures; and
on detecting on detecting [sic] an alert condition as
specified in the profile information or a communication failure
at a trader’s trading command address, transmitting an alert
message to the alert address for the failed trader, the alert
reporting trading status of orders of the failed trader at the time
of the alert condition and/or reflecting trading of orders of the
failed trader after the alert condition.

In claim 46, it is unclear to what the terms “their respective trading
command addresses,” “the alert address,” “the failed trader,” and “the
communication failure over the trading command address” refer. Each
claim term lacks antecedent basis. Claim 46 recites “profile information
describing trader users of the system and device addresses used by the
traders,” but does not indicate how or if this is related to the terms “their
respective trading command addresses” and “the alert address.” Claim 46
also recites “the profile information including trader-specified criteria for
detecting an alert condition of respective devices,” but does not indicate how
or if this is related to the terms “the communication failure over the trading
command address” and “the failed trader.”
In claim 47, the term “a trader’s second address being used by the
trading system as an address for communication of alerts” is recited as is the
term “the alert address for the failed trader.” It is unclear if the term “the
alert address” in claim 46 refers to a different alert address from that referred
to in claim 47.
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“We employ a lower threshold of ambiguity when reviewing a
pending claim for indefiniteness than those used by post-issuance reviewing
courts.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential). Specifically, “if a claim is amenable to two or more plausible
claim constructions, the USPTO is justified in requiring the applicant to
more precisely define the metes and bounds of the claimed invention by
holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as
indefinite.” Id.; see also In re Packard, 751 F.3d 1307, 1311 (Fed.
Cir. 2014).
In view of the above, we do not sustain the rejection under § 103(a) of
independent claim 46 and dependent claims 47–54 because this rejection is
necessarily based on speculative assumptions as to the meaning of the
claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962).
It must be understood, however, that our decision regarding this
rejection is based solely on the ambiguity of the claims and does not reflect
in any manner on the adequacy of the prior art evidence relied on in the
Examiner’s rejection.
Further in view of the above, and pursuant to our authority under
37 C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION against
claims 46–54 under 35 U.S.C § 112, second paragraph, as indefinite with
regard to the recitation of the terms “their respective trading command
addresses,” “the alert address,” “the failed trader,” “the communication
failure over the trading command address,” and “the alert address for the
failed trader.”

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CONCLUSION
The Examiner’s rejections of claims 1–6, 12–17, 40, and 42–54 under
35 U.S.C. § 103(a) are reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION against claims 46–54 under 35 U.S.C § 112,
second paragraph, as indefinite.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that, “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) further provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THIS DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
Specifically:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1–3, 12–
14, 42, 44,
46, 47, 50–
52, 54
103(a) Hawkins, Ordish 1–3, 12–
14, 42,
44, 46,
47, 50–
52, 54

4–6, 15–17 103(a) Hawkins, Ordish,
Evans
4–6, 15–
17

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Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
40, 53 103(a) Hawkins, Ordish,
Alam
40, 53
43, 45, 48,
49
103(a) Hawkins, Ordish,
Boggs
43, 45,
48, 49

46–54 112,
second
paragraph
Indefiniteness 46–54
Overall
Outcome
1–6, 12–
17, 40,
42–54
46–54

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)