Ex Parte Calo et al

Patent Trial and Appeal Board

Jan 28, 2013

09769036 (P.T.A.B. Jan. 28, 2013)

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.
09/769,036 01/24/2001 Bea Calo 1991-00301 5934
7590 01/29/2013
ROBERT GRAY
CONLEY, ROSE & TAYON, P.C.
P.O. Box 3267
Houston, TX 77253-3267
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
01/29/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BEA CALO and WILLIAM JOHNSON
____________

Appeal 2010-011726
Application 09/769,036
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011726
Application 09/769,036

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STATEMENT OF THE CASE
Bea Calo, et al. (Appellants) seek our review under 35 U.S.C. § 134
(2002) of the final rejection of claims 3, 4, 6, 7, 11-13, 21, 22, 24-26, 29, and
46. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.1
THE INVENTION
Claim 3, reproduced below, is illustrative of the subject matter on
appeal.
3. A computerized system for trading securities and
commodities, comprising:
a computerized introducing affiliate in a first country
suitable for accepting a transaction order from a customer and
transmitting said transaction order electronically, said
transaction order being for the handling of a security or
commodity;
an exchange on which said security or commodity is
traded;
a computerized executing affiliate in a second country
suitable for electronically receiving said transaction order and
executing said transaction order on the exchange; and
a global hub connected between said introducing affiliate
and said executing affiliate, wherein said global hub
electronically routes said transaction order from said
introducing affiliate to said executing affiliate,

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Feb. 22, 2010) and Reply Brief (“Reply Br.,” filed Jul. 26, 2010),
and the Examiner’s Answer (“Ans.,” mailed May 26, 2010).
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wherein said transaction order is to sell an equity, and
said executing affiliate electronically transmits proceeds from
said sale of said equity to said introducing affiliate via the
global hub;
wherein, as a result of detecting a corporate action
pertaining to one or more open transaction orders, the
computerized executing affiliate transfers one or more
messages to the global hub, said messages containing
information pertaining to said open transaction orders affected
by the corporate action;
wherein, as a result of receiving said messages, the global
hub forwards at least one of the messages to the computerized
introducing affiliate, said at least one of the messages contains
information pertaining to open transaction orders placed by said
introducing affiliate.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Wagner
Minton
Hawkins
Chichilnisky
Harada

US 5,424,938
US 6,014,643
US 6,029,146
US 2002/0032642 A1
US 2003/0208440 A1
Jun. 13, 1995
Jan. 11, 2000
Feb. 22, 2000
Mar. 14, 2002
Nov. 6, 2003

The following rejections are before us for review:
1. Claims 3, 4, 6, 7, 11, 13, 26, 29, and 46 are rejected under 35 U.S.C. §
103(a) as being unpatentable over Wagner, Hawkins, Minton, and
Chichilnisky.
2. Claim 12 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Wagner, Hawkins, Harada, Minton, and Chichilnisky.

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3. Claims 21, 22, 24, and 25 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hawkins, Harada, Minton, and Chichilnisky.

ISSUES
Did the Examiner err in rejecting the claims as unpatentable over the
cited prior art combination? Specifically, would it have been obvious to one
of ordinary skill in the art given the cited prior art combination to provide
for a system as claimed wherein corporate action and messages containing
information pertaining to open transaction orders are involved?

ANALYSIS
The rejection of claims 3, 4, 6, 7, 11, 13, 26, 29, and 46 under 35 U.S.C. §
103(a) as being unpatentable over Wagner, Hawkins, Minton, and
Chichilnisky.
The Appellants argued claims 3, 4, 6, 7, 11, 13, 26, 29, and 46 as a
group (App. Br. 15-17). We select claim 3 as the representative claim for
this group, and the remaining claims 4, 6, 7, 11, 13, 26, 29, and 46 stand or
fall with claim 3. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Claim 3 is drawn to an apparatus, specifically a computerized system
for trading securities and commodities. The system as claimed comprises
four elements: (a) a computerized introducing affiliate; (b) an exchange; (c)
a computerized executing affiliate; and (d) a global hub. Each of these
elements, per the claim, have particular functions. In the case of the
computerized introducing affiliate (a), its function is to accept a transaction
order to sell a security and transmit it electronically. In the case of the
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computerized executing affiliate (c), its function is to electronically receive
the transaction and execute it on the exchange (b) so that proceeds from the
sale of the equity are transmitted to the introducing affiliate via the global
hub (d). The global hub’s purpose is to connect the two affiliates (a) and (c).
It is the Examiner’s position that the Wagner and Hawkins disclosures are
such that the combination teaches this system. Ans. 4. The Appellants have
not challenged this conclusion in their briefs. Accordingly, we take as
accepted that the combination of Wagner and Hawkins would have led one
of ordinary skill in the art to a system comprising the four elements (a) – (d)
as claimed.
We now turn to the remaining limitations in claim 3. They are:
wherein, as a result of detecting a corporate action
pertaining to one or more open transaction orders, the
computerized executing affiliate transfers one or more
messages to the global hub, said messages containing
information pertaining to said open transaction orders affected
by the corporate action;
wherein, as a result of receiving said messages, the global
hub forwards at least one of the messages to the computerized
introducing affiliate, said at least one of the messages contains
information pertaining to open transaction orders placed by said
introducing affiliate.
The Examiner appears to concede that the combination of Wagner and
Hawkins does not teach these limitations. Ans. 4. To overcome this, the
Examiner relies on Chichilnisky and Minton.
Chichilnisky (paras. [0021], [0054]-[0061], [0087], [0104]-[0105],
and [0131]) is relied upon for its alleged teaching of detecting a corporate
action pertaining to portfolios, providing for a computerized executing
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affiliate transferring one or more messages to the global hub, said messages
containing information pertaining to said portfolios affected by the corporate
action, and, as a result of receiving said messages, providing for the global
hub to forward at least one of the messages to the computerized introducing
affiliate, said at least one of the messages contains information pertaining to
portfolios placed by said introducing affiliate. Ans. 4. The Appellants have
not disputed the Examiner’s characterization of the scope and content of
Chichilnisky. Accordingly, we take it as accepted.
Minton (col. 11, ll. 20-25) is relied upon for its alleged disclosure of
the “concept of detecting a corporate action (dividend payout) pertaining to
limit order” (Ans. 4). Presumably, Minton is relied upon to show that
corporate actions pertaining to open transactions (e.g., limit orders) were
known, which specifically addresses the limitation in the claim wherein
corporate action and messages containing information pertain to open
transaction orders. Chichilnisky, by contrast, is alleged to pertain to
portfolios. The Appellants have not disputed the Examiner’s
characterization of the scope and content of Minton. Accordingly, we take it
as accepted.
Given these disclosures, the Examiner concludes that it would have
been obvious to one of ordinary skill in the art to modify the system of the
combination of Wagner and Hawkins to include the features of Minton.
Ans. 5. The apparent reason for combining the references is said to be:
“alerting the introducing affiliate of the corporate action so that appropriate
action can be taken by the introducing affiliate on detecting such corporate
action.” Ans. 5.
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The Appellants challenge to the prima facie case of obviousness on
the ground that Chichilnisky involves corporate action and information
pertaining to portfolios and not open transaction orders as claimed. “No
disclosure of any element that transfers one or more messages containing
information pertaining to an open transaction order affected by a corporate
action as a result of detecting the corporate action can be found.” App. Br.
15. “Chichilnisky fails to disclose any element that forwards at least one
message containing information pertaining to an open transaction order
placed by the element as a result of receiving the message.” App. Br. 16.
“Chichilnisky discloses reporting updates on portfolios for corporate action
events. (Chichilnisky ¶ 0104).” App. Br. 16. See also the Reply Brief at 3:
“Chichilnisky discloses that such voluntary offers are corporate actions,
which are distinct from transaction orders.”
This argument does not persuade us as to error in the rejection.
Claim 3 sets forth a condition and a step to be performed by the
computerized executing element (c) of the claimed system when that
condition occurs; that is, “as a result of detecting a corporate action ... the
computerized executing affiliate transfers one or more message to the global
hub” (claim 3). Chichilnisky is alleged to disclose corporate action and a
computerized executing affiliate sending one or more messages as a result.
This is not in dispute. See discussion above. As this is an apparatus claim
and not a method claim, the distinction over Chichilnisky must lie in the
structure of the apparatus and in particular the computerized executing
element (c) which effects the sending of the one or more messages as a
result of the corporate action. None has been shown and we see none,
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notwithstanding that the corporate actions involve different subjects
(portfolios in the case of Chichilnisky versus open transaction orders in the
case of claim 3). Both the claimed system and that of Chichilnisky function
so as to send the one or more messages as a result of corporate action.
Absent evidence to the contrary, of which none has been provided, we can
find no unobvious structural distinction in the claimed system over that of
Chichilnisky “as a result of detecting a corporate action ... the computerized
executing affiliate transfers one or more message to the global hub” (claim
3). Cf. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997) (functional
language does not confer patentability if prior art structure has capability of
functioning in the same manner).
As to the difference between messages containing information
pertaining to one or more open transaction orders (claim 3) and messages
containing information pertaining to portfolios (Chichilnisky), we do not
find that difference in informational content carries patentable weight. The
matter to which the information contained in the messages pertain is a matter
of nonfunctional descriptive material. Patentable weight need not be given
to descriptive material absent a new and unobvious functional relationship
between the descriptive material and the substrate. See In re Lowry, 32 F.3d
1579, 1582-83 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir.
2004). In that regard, we have not been shown, nor do we see any, new and
unobvious functional relationship between the one or more open transaction
orders contained in the messages and any element of the system claimed.
For the foregoing reasons, the argument challenging the prima facie
case of obviousness is not persuasive as to error in the rejection of claim 3.
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There being no other arguments and no objective evidence of
nonobviousness for our consideration, the rejection of claim 3 is sustained.
Because the remaining claims 4, 6, 7, 11, 13, 26, 29, and 46 stand or fall
with claim 3, their rejection as being unpatentable over the cited prior art
combination is also sustained.

The rejection of claim 12 under 35 U.S.C. § 103(a) as being unpatentable
over Wagner, Hawkins, Harada, Minton, and Chichilnisky.
The Appellants rely on the argument made against the rejection of
claims 3, 4, 6, 7, 11, 13, 26, 29, and 46 in challenging the rejection of claim
12. See App. Br. 18. For the reasons discussed above with respect to the
rejection of claims 3, 4, 6, 7, 11, 13, 26, 29, and 46, we are not persuaded as
to error in the rejection.

The rejection of claims 21, 22, 24, and 25 under 35 U.S.C. § 103(a) as being
unpatentable over Hawkins, Harada, Minton, and Chichilnisky.
The Appellants rely on the argument made against the rejection of
claims 3, 4, 6, 7, 11, 13, 26, 29, and 46 in challenging the rejection of claim
12. See App. Br. 18. For the reasons discussed above with respect to the
rejection of claims 3, 4, 6, 7, 11, 13, 26, 29, and 46, we are not persuaded as
to error in the rejection.

CONCLUSIONS
The rejections of claims 3, 4, 6, 7, 11, 13, 26, 29, and 46 under 35
U.S.C. § 103(a) as being unpatentable over Wagner, Hawkins, Minton, and
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Chichilnisky; claim 12 under 35 U.S.C. § 103(a) as being unpatentable over
Wagner, Hawkins, Harada, Minton, and Chichilnisky; and, claims 21, 22,
24, and 25 under 35 U.S.C. § 103(a) as being unpatentable over Hawkins,
Harada, Minton, and Chichilnisky, are affirmed.

DECISION
The decision of the Examiner to reject claims 3, 4, 6, 7, 11-13, 21, 22,
24-26, 29, 46 is affirmed.
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).
AFFIRMED

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