Ex Parte Pinkava

Patent Trial and Appeal Board

Nov 12, 2013

11179382 (P.T.A.B. Nov. 12, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte PAVEL PINKAVA 7
___________ 8
9
Appeal 2011-006829 10
Application 11/179,382 11
Technology Center 3600 12
___________ 13
14
15
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and 16
BIBHU R. MOHANTY, Administrative Patent Judges. 17
18
FETTING, Administrative Patent Judge. 19
20
21
DECISION ON APPEAL22
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STATEMENT OF THE CASE1 1
Pavel Pinkava (Appellant) seeks review under 35 U.S.C. § 134 of a 2
final rejection of claims 18-23, which along with claims 1-17 withdrawn 3
from consideration, are the only claims pending in the application on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 5
The Appellant invented a set of linked methods, system upgrades, 6
computer program products, and financial product designs for enabling 7
trading and settling of new product types on what were hitherto only futures 8
exchanges and their clearing houses (Spec., para. 0002). 9
An understanding of the invention can be derived from a reading of 10
exemplary claim 18, which is reproduced below (bracketed matter and some 11
paragraphing added). 12
18. A method 13
of accessing exact OTC ISDA [Over the Counter 14
International Swaps and Derivatives Association] 15
overnight indexed swap exposures 16
within an electronic futures exchange environment 17
comprising at least 18
one exchange computer 19
and 20
associated computer-readable memory accessible 21
by that exchange computer, 22
the method comprising: 23
[1] providing via the at least one exchange computer 24
a listed for trading derivative product [i.e. a derivative 25
product that is listed for trading] which gives overnight 26
indexed swap exposure; 27
[2] executing a trade of the listed for trading product 28
pursuant to a user command 29

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed October 1, 2010) and the Examiner’s Answer (“Ans.,” mailed
December 8, 2010).
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received via a user interface at the at least one exchange 1
computer; 2
[3] creating on the at least one exchange computer 3
positions based on the executed trade in two different 4
types of post trade for clearing products, 5
wherein each distinct position so created consists of 6
a Fixed Rate OIS Product 7
paired and offset with 8
Overnight Indexed Products of the same 9
expiry, 10
with each position created 11
at zero price 12
and 13
in volumes based on the executed swap rate 14
quotation product trade 15
as determined by an algorithm 16
comprising a set of parameterized 17
mapping formulae; 18
[4] after a specified number of business days associated with 19
the definition of spot in the relevant money market, 20
using a standard overnight index rate benchmark to 21
augment via a parameterized formula 22
the position sizes of the Overnight Indexed 23
Products 24
with additional contract positions created at zero 25
price 26
via the at least one exchange computer to have an 27
effect of compounding; 28
[5] providing end of day valuation and risk management 29
through variation and initial margin calls of a central 30
counterparty, 31
wherein daily settlement prices for both Fixed Rate OIS 32
and Overnight Indexed Products for clearing are set 33
based on a parameterized algorithm 34
using as its input the set of daily mark to market 35
reference prices 36
from the listed for trading swap rate 37
quotation product market; 38
and 39
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[6] at expiry 1
cash settling both the overnight indexed and fixed 2
contracts. 3
4
The Examiner relies upon the following prior art: 5
Mosler U.S. 6,304,858 B1 Oct. 16, 2001 6
Claims 18-23 stand rejected under 35 U.S.C. § 112, first paragraph, as 7
lacking a supporting written description within the original disclosure. 8
Claims 18-23 stand rejected under 35 U.S.C. § 112, second paragraph, 9
as failing to particularly point out and distinctly claim the invention. 10
Claims 18-23 stand rejected under 35 U.S.C. § 101 as directed to non-11
statutory subject matter. 12
Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as 13
unpatentable over Mosler. 14
15
ISSUES 16
The issues of written description turn primarily on whether the 17
Specification and Drawings show possession of a computer implementation 18
of the recited steps. The issues of indefiniteness turn primarily on whether 19
Appellant clarified the portions Examiner found unclear. The issues of 20
statutory subject matter turn primarily on whether the mere recitation of 21
performance by a computer is sufficient to make statutory. The issues of 22
obviousness turn primarily on whether the Examiner made findings as to 23
why the limitations missing from Mosler were predictable. 24
25
FACTS PERTINENT TO THE ISSUES 26
The following enumerated Findings of Fact (FF) are believed to be 27
supported by a preponderance of the evidence. 28
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Facts Related to the Prior Art 1
Mosler 2
01. Mosler is directed to trading and settling a product and for trading 3
and settling a contract having a price based on any preselected 4
interest rate swap curve. Mosler 1:17-22. 5
02. Mosler does not describe using a Fixed Rate OIS Product paired 6
and offset with Overnight Indexed Products of the same expiry. 7
8
ANALYSIS 9
The Examiner also objects to the claims for not spelling out the 10
acronyms and for improper capitalization (Fin. Rej. 2-3 and Ans. 3-4). The 11
Appellant requests remedying the objection by appropriate amendment 12
(Appeal Br. 4). However, a challenge to an objection is a petitionable matter 13
and not an appealable matter. See In re Schneider, 481 F.2d 1350, 1356-57 14
(CCPA 1973) and In re Mindick, 371 F.2d 892, 894 (CCPA 1967). See also 15
the Manual of Patent Examining Procedure (MPEP) § 1002.02(c), item 4 16
and § 1201 (8th ed., rev. 9, Aug. 2012). Thus, the relief sought by the 17
Appellant would have been properly presented by a petition to the 18
Commissioner under 37 C.F.R. § 1.181 instead of by appeal to this Board. 19
Accordingly, we will not further consider the objection to the Specification. 20
21
Claims 18-23 rejected under 35 U.S.C. § 112, first paragraph, as lacking a 22
supporting written description within the original disclosure. 23
The Examiner rejected claims 18-22 as failing to provide written 24
description support for how the steps recited in the claims were on a 25
computer. We are persuaded by the Appellant’s argument that the 102 pages 26
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of Specification and 27 Figures including flow charts and exemplary 1
computer code are sufficient to show possession of the claimed subject 2
matter. 3
The Examiner separately rejected claim 23 as not having support for a 4
negative limitation. Fin. Rej. 4; Ans. 5. Appellant does not contest this and 5
so we summarily affirm this rejection. 6
7
Claims 18-23 rejected under 35 U.S.C. § 112, second paragraph, as failing 8
to particularly point out and distinctly claim the invention. 9
We are persuaded by the Appellant’s argument as to claims 18-22 that 10
the Appellant provided clarification to the phrases the Examiner indicated he 11
had difficulty understanding. Appellant does not contest the rejection of 12
claim 23 as lacking antecedent basis and so we summarily affirm this 13
rejection. 14
15
Claims 18-23 rejected under 35 U.S.C. § 101 as directed to non-statutory 16
subject matter. 17
We are persuaded by the Appellant’s argument that 18
Here, the claims are clearly not directed to an abstract idea 19
since both the claims and specification recite various steps that 20
are performed by exchange computer(s) and user interface(s). 21
Therefore, because the methods of the present claims 18-22
23 are being performed by at least one exchange computer and 23
user interface, the claimed methods are tied to a particular 24
machine or apparatus and are clearly not directed to abstract 25
ideas. 26
Appeal Br. 11. The Examiner found 27
[c]laims 18-23 recite the steps providing, executing, 28
creating and using. While these steps are recited to be 29
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performed "via the at least one exchange computer" or received 1
via a user interface at the at least one exchange computer, are 2
not tied to a particular machine or apparatus nor do they 3
transform a particular article into a different state or thing, 4
thereby failing the machine-or-transformation test; therefore, 5
claims 18 is non-statutory under § 101. 6
Ans. 11. Thus while the Examiner found that the steps were merely abstract 7
concepts, Appellant does show which steps are not abstract concepts and 8
why that is so. In particular, executing a trade on a computer pursuant to a 9
user command received via a user interface requires a special purpose 10
computer with such an interface capable of receiving such a command and 11
triggering a trade execution as a result. Creating positions based on trade 12
results on a computer requires a special purpose machine that is capable of 13
creating those positions from the trade results. The remaining limitations 14
require similar special purpose machines to provide the recited capacity to 15
augment position sizes, provide end of day processing, and cash settle trades 16
at expiry. 17
18
Claims 18 and 19 rejected under 35 U.S.C. § 103(a) as unpatentable over 19
Mosler. 20
We are persuaded by the Appellant’s argument that Mosler does not 21
describe using a Fixed Rate OIS Product paired and offset with Overnight 22
Indexed Products of the same expiry. The Examiner finds using these is a 23
predictable variant of Mosler but does not explain why. 24
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CONCLUSIONS OF LAW 1
The rejection of claims 18-22 under 35 U.S.C. § 112, first paragraph, 2
as lacking a supporting written description within the original disclosure is 3
improper. 4
The rejection of claim 23 under 35 U.S.C. § 112, first paragraph, as 5
lacking a supporting written description within the original disclosure is 6
proper. 7
The rejection of claims 18-22 under 35 U.S.C. § 112, second paragraph, 8
as failing to particularly point out and distinctly claim the invention is 9
improper. 10
The rejection of claim 23 under 35 U.S.C. § 112, second paragraph, as 11
failing to particularly point out and distinctly claim the invention is proper. 12
The rejection of claims 18-23 under 35 U.S.C. § 101 as directed to 13
non-statutory subject matter is improper. 14
The rejection of claims 18 and 19 under 35 U.S.C. § 103(a) as 15
unpatentable over Mosler is improper. 16
17
DECISION 18
The rejections of claims 18-22 are reversed. 19
The rejections of claim 23 are affirmed. 20
No time period for taking any subsequent action in connection with 21
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 22
§ 1.136(a)(1)(iv) (2011). 23
24
AFFIRMED-IN-PART 25
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27
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