Johnson, James C.Download PDFPatent Trials and Appeals BoardMay 20, 202011686647 - (D) (P.T.A.B. May. 20, 2020) 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. 11/686,647 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.) Appeal 2019-003350 Application 11/686,647 2 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 Appeal 2019-003350 Application 11/686,647 3 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.) Appeal 2019-003350 Application 11/686,647 4 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 Appeal 2019-003350 Application 11/686,647 5 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 Appeal 2019-003350 Application 11/686,647 6 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 Appeal 2019-003350 Application 11/686,647 7 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. Appeal 2019-003350 Application 11/686,647 8 § 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 Appeal 2019-003350 Application 11/686,647 9 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. Appeal 2019-003350 Application 11/686,647 10 “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.” Appeal 2019-003350 Application 11/686,647 11 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 Appeal 2019-003350 Application 11/686,647 12 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) Copy with citationCopy as parenthetical citation