Ex Parte Lutnick et alDownload PDFPatent Trial and Appeal BoardJul 27, 201612840187 (P.T.A.B. Jul. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/840, 187 07/20/2010 63710 7590 07/29/2016 INNOVATION DIVISION CANTOR FITZGERALD, L.P. 110 EAST 59TH STREET (6TH FLOOR) NEW YORK, NY 10022 FIRST NAMED INVENTOR Howard W. LUTNICK 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. 06-1122-Cl 9657 EXAMINER MADAMBA, CLIFFORD B ART UNIT PAPER NUMBER 3692 NOTIFICATION DATE DELIVERY MODE 07/29/2016 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): 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 HOWARD W. LUTNICK, JOSEPH NOVIELLO, MICHAEL SWEETING, and BUOY PAUL Appeal2014-000816 Application 12/840,187 Technology Center 3600 Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and MATTHEWS. MEYERS, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner's final decision rejecting claims 1-20. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We REVERSE. Claim 1 is illustrative: 1. A method for trading an item in an electronic trading system, the method comprising: receiving at at least one processor an incoming order for the item from at least one server coupled to the at least one processor over a network; Appeal2014-000816 Application 12/840, 187 determining by the at least one processor that the incoming order is contra to a current order, includes a volume equal to or greater than a volume of the current order, and satisfies a predetermined minimum volume requirement; based on the act of determining that the incoming order is contra to a current order, includes a volume equal to or greater than a volume of the current order, and satisfies the predetermined minimum volume requirement: transacting a trade between the incoming order and the current order in the electronic trading system; and providing in the electronic trading system a predetermined time period of exclusive trading between a participant associated with the incoming order and a participant associated with the current order. Appellants appeal the following rejections: 1. Claims 1-18 on the ground of non-statutory obviousness-type double patenting as unpatentable over claims 1--49 of US Patent No. 7,761,366. 2. Claims 1 and 10 under 35 U.S.C. § 103(a) as unpatentable over Waelbroeck (US 2004/0210511 Al, pub. Oct. 21, 2004) and Fraser (US 6,560,580 Bl, iss. May 6, 2003). 3. Claims 2--4, 8, 9, 11-14, 19, and 20 under 35 U.S.C. § 103(a) as unpatentable over Waelbroeck, Fraser, and Korzinin (US 2007 /0022036 Al, pub. Jan. 25, 2007). 4. Claims 5-7, 15, and 16 under 35 U.S.C. § 103(a) as unpatentable over Waelbroeck, Fraser, and Schwartz (US 7,236,944 Bl, iss. June 26, 2007). 5. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over Waelbroeck and Korzinin. 6. Claim 18 under 35 U.S.C. § 103(a) as unpatentable over Waelbroeck, Korzinin, and Fraser. 2 Appeal2014-000816 Application 12/840, 187 ISSUE Did the Examiner err in rejecting the claims because Waelbroeck does not disclose determining that a quantity of an order is greater than or equal to that of a contra order? ANALYSIS Double Patenting In making this rejection, the Examiner argues that the subject matter claimed in the instant application is fully disclosed in U.S. Patent No. 7, 7 61,3 66 ("Lutnick patent") because independent claims 1, 10 and 17 of the instant application recite substantial features than can be found in independent claims 1, 7, 13, 19, 25, 26, and 48 ofLutnick (Final Act. 5). We will not sustain this rejection. We agree with the Appellants' argument found on pages 7-9 of the Appeal Brief and page 2 of the Reply Brief. In this regard, we agree with the Appellants that the Examiner has not set out a proper double patenting rejection, because the Examiner has not compared each of the claims of the instant application to a claim in the Lutnick patent and explained why the application claims are obvious in view of the Lutnick patent claims. For example, the Examiner compares claim 1 of the instant application to claim 1 of the Lutnick patent, but there is no explanation of how the providing step of claim 1 of the application is obvious in view of claim 1 of the Lutnick patent which does not include the providing step. In view of the foregoing, we will not sustain this rejection. 3 Appeal2014-000816 Application 12/840, 187 Obviousness The Appellants argue that paragraphs 46 and 109 of Waelbroeck do not disclose comparing one order's volume to another order's volume. We agree. We find that paragraph 46 of Waelbroeck discloses that all orders are preferably entered in a large block quantity so as to deter gaming and to mitigate buyer's remorse. While this portion of Waelbroeck teaches that there is a requirement for the volume of the order, it does not teach that that volume is compared to the volume of a contra order, as required by claim 1. Waelbroeck discloses that tickets or placements from the client's order management system help traders keep tabs on how many shares they are doing in each market. The purpose of the tickets is to make sure that the aggregate number of shares placed across all destinations will never exceed the total number of shares of the client's overall order [82]. We find that paragraph 109 of \Vaelbroeck discloses that if the client uses tickets, there is a validation step that makes sure that the order does not exceed the size of the associated ticket. As such, Waelbroeck compares the size of the ticket and the size of the order on the same side. Waelbroeck does not compare the size of an order to the size of a contra order. In addition, when comparing the size of the order to the size of the ticket on the same side, Waelbroeck makes sure that the order does not exceed the ticket rather than making sure that the volume is equal to or greater than the volume of the ticket as required by claim 1. Therefore, we will not sustain the Examiner's rejection of claim 1 and claims 2-9 dependent therefrom. We will likewise not sustain the Examiner's rejection of 10 and claims 11-16 dependent therefrom because 4 Appeal2014-000816 Application 12/840, 187 claim 10 requires a processor that determines whether one order includes a volume equal to or greater than a volume of another order, and the Examiner has not established that the processor in Waelbroeck has this capability. We will also not sustain the Examiner's rejection of claim 17, and claims 18-20 dependent therefrom, because these claims also require determining that an order includes a volume that is equal to or greater than the volume of a contra order. DECISION The decision of the Examiner is reversed. REVERSED 5 Copy with citationCopy as parenthetical citation