Ex Parte Hadi et alDownload PDFPatent Trial and Appeal BoardNov 21, 201311954656 (P.T.A.B. Nov. 21, 2013) Copy Citation 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. 11/954,656 12/12/2007 Muhammed Hadi 04672-00650 4291 49664 7590 11/21/2013 BGL/CME Group P.O. BOX 10395 CHICAGO, IL 60610 EXAMINER MAGUIRE, LINDSAY M ART UNIT PAPER NUMBER 3693 MAIL DATE DELIVERY MODE 11/21/2013 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 MUHAMMED HADI, DALE MICHAELS, AMY STEPHEN, SUNEEL IYER, and KETAN PATEL ____________ Appeal 2011-012210 Application 11/954,656 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and PHILIP J. HOFFMANN, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-012210 Application 11/954,656 2 STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-19, which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We REVERSE. THE INVENTION The Appellants’ claimed invention is directed to a system and method for conversion and liquidation of defaulted open positions for illiquid markets (Spec. 2). Claim 1, with the numbering in brackets added, is representative of the subject matter on appeal. 1. A method of liquidating defaulted positions associated with centrally cleared illiquid financial product, the method comprising: [1] identifying, by a program logic executable by a processor, a defaulted position associated with a centrally cleared financial product offered by a clearing counterparty; [2] calculating, by the processor, a value differential between the defaulted position and a standard position; [3] offering, by the processor, the value differential and the standard position to a party, wherein the value differential and the standard position represent a converted position; and [4] settling, by the processor, the converted position upon acceptance of the offer by the party. Appeal 2011-012210 Application 11/954,656 3 THE REJECTION The Examiner relies upon the following as evidence in support of the rejection: Hirani US 2006/0036534 A1 Feb. 16, 2006 The following rejection is before us for review: 1. Claims 1-19 are rejected under 35 U.S.C. § 102(b) as anticipated by Hirani. FINDINGS OF FACT We find that the findings of fact used in the Analysis section below are supported at least by a preponderance of the evidence.1 ANALYSIS The Appellants argue that the rejection of claim 1 is improper because the prior art fails to disclose elements of claim limitations [1] and [2] (Br. 6- 7, Reply Br. 2-5). In contrast, the Examiner has determined that the rejection is proper and that claim limitation [1] is found in paragraphs [0034], [0047], [0057], and [0060] – [0062] of Hirani, and claim limitation [2] is found in paragraphs [0035], [0048], and [0065] of Hirani (Ans. 4-5, 10). We agree with the Appellants. Claim limitation [1] requires that a defaulted position offered by a clearing counterparty be identified, and claim limitation [2] requires calculating a value differential between the defaulted 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2011-012210 Application 11/954,656 4 position and a standard position. Thus, claim limitations [1] and [2] require, in part, identifying a defaulted position and making a calculation based upon the identified defaulted position and a standard position. Here, the above citations to Hirani at paragraphs [0034], [0035], [0047], [0048], [0057], [0060] – [0062], and [0065] fail to specifically disclose a “defaulted position” as required by at least claim limitations [1] and [2], and thus the rejection is not sustained. While Hirani at paragraph [0057] does describe a “default” amount, Hirani discusses this “default” amount in the context of a “volume upsizing process,” which is not the same as a “defaulted position,” as recited by claim 1. The Appellants’ Specification at paragraph [0018] describes that a “defaulted position” arises where a party to a swap position or contract has defaulted or has failed to perform on its portion of the swap contract. In contrast, Hirani discloses that its “volume upsizing process” gives a trader the option to “upsize” (i.e., increase) the amount of credit derivatives traded, once a trader engages in trading a default or standard amount (paras. [0056] – [0057]; see Fig. 8). Hirani describes that this “volume upsizing process” allows a trader to trade an amount greater than the standard or default amount “without making the market aware of his intention, thereby maintaining the value of his credit derivative” (para. [0057]). Thus, the “default” amount disclosed in Hirani is related to the volume of a trade, with the standard or default amount being the initial amount traded. However, even if we were to agree with the Examiner that the “default amount” disclosed in Hirani is the same as the “defaulted position” of limitation [1], the Examiner still fails to show how Hirani would calculate a value differential between the defaulted position and a standard position as Appeal 2011-012210 Application 11/954,656 5 claim limitation [2] requires, given that paragraph [0057] of Hirani refers to a “default or standard amount,” i.e., a single value. Accordingly, we agree with the Appellants that the “default” amount disclosed in Hirani fails to anticipate a “defaulted position,” as presently recited by limitations [1] and [2] of claim 1. For these reasons, the rejection of claim 1 and its dependent claims is not sustained. Independent claims 9 and 14 contain similar limitations and the rejection of these claims and their dependent claims is not sustained for the same reasons. CONCLUSIONS OF LAW We conclude that Appellants have shown that the Examiner erred in rejecting the claims as listed in the Rejection section above. DECISION The Examiner’s rejection of claims 1-19 is reversed. REVERSED Klh Copy with citationCopy as parenthetical citation