Ex Parte Bok et al

Board of Patent Appeals and Interferences

Mar 9, 2012

10457479 (B.P.A.I. Mar. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TOMAS BOK and DAVID CUSHING
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Appeal 2012-001734
Application 10/457,479
Technology Center 3600
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Before: ANTON W. FETTING, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-001734
Application 10/457,479

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1, 4, 5, 7-11, 14,
15, 17-21, 24, 25, 27-30, and 34-42. We have jurisdiction to review the case
under 35 U.S.C. §§ 134 and 6 (2002). Oral hearings were held on March 8,
2012.
The claimed invention is directed to a system, method, and computer
program product for executing an order to buy or sell a specified number of
units of a certain item (Spec. [0001]). Claim 1, reproduced below, is further
illustrative of the claimed subject matter.
1. A computerized method for selling X shares of a
stock, where X is a number greater than zero, comprising:
via a computer in data communications with an
electronic market place, electronically submitting to the
electronic market place, an initial set of tranche orders to sell Y
shares of the stock, wherein Y is a number less than or equal to
X;
via said computer, calculating a total number of shares
from the initial set of tranche orders that have been sold at a
selected point in time;
employing a set of trading targets [TradingValue=xt
Time=t], wherein 0 < xt < X for a plurality of time values t;
via said computer, calculating an urgency score, wherein
the urgency score is based, at least in part, on said determined
total number of shares sold at said selected point in time
compared to X, and is also a function of a TradingValue
associated with said selected point in time; and
via said computer, creating and electronically submitting
to the electronic market place, at least one new tranche order
specifying a quantity and a target price, or modifying an
existing tranche order from said initial set of tranche orders,
wherein the target price or modification is determined based, at
least in part, on the urgency score.

Appeal 2012-001734
Application 10/457,479

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Claims 1, 4, 5, 8, 9, 11, 14, 15, 18, 19, 21, 24, 25, 28, 29, and 34-42
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hausman
(US2002/0178104 A1 publ. Nov. 28, 2002) in view of Mahanti (US
2002/0052824 A1 publ. May 2, 2002) and Weber (Lewis H. Weber, The
Cumulative Record as a Management Tool, Issue 2, Behavorial Technology
Today (2002)); and claims 7, 10, 17, 20, 27, and 30 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Hausman in view of Mahanti, Weber,
and Korhammer (US 2004/0143538 A1 publ. Jul. 22, 2004).
We REVERSE.

FINDINGS OF FACT
Specification
FF1. The claimed invention is directed to solving problems
associated with automated bin-based strategies for trading commodities
([0003]-[0004]).

Weber
FF2. Weber is directed to applying behavioral reinforcement and
measurement technology so as to more effectively manage personnel in a
business setting, such as retail sales (pp. 1-8).

ANALYSIS
We are persuaded the Examiner erred in asserting that a combination
of Hausman, Mahanti, and Weber renders obvious independent claim 11,

1 We choose independent claim 1 as representative of independent claims 1,
11, and 21. See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2012-001734
Application 10/457,479

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because Weber is a non-analogous reference (App. Br. 5-6; Reply Br. 3-5).
The Examiner asserts
[t]he applicant's summary of claimed subject matter page 3
recites “the current invention relies on continuous, not bin
based, evaluation of the progress of the trade.” Weber
discusses evaluation of sales based on continuous cumulative
data rather than bin based (daily) data. Weber is analogous art.
. . .Weber addresses reaching sales targets, which is the problem
addressed by the invention. The applicant argues that
managing sales professionals is unlike managing automated
trades. Trades are sales, trading targets are broadly interpreted
as sales targets, and the problem of measuring progress towards
sales targets over time is common to both. A person of
ordinary skill in the art concerned with measuring progress
towards sales targets would consider Weber because it is
reasonably pertinent to the problem.

(Exam’r’s Ans. 11-12). We disagree. In order to be considered analogous
art, a prior art reference must either [1] be in the field of applicant’s
endeavor or, if not, then [2] be reasonably pertinent to the particular problem
with which the applicant was concerned, in order to be relied upon as a basis
for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443,
1447 (Fed. Cir. 1992). For factor [1], commodities trading and retail sales
are clearly not in the same field (FF1, FF2). For factor [2], we find that the
Examiner casts too wide a net in asserting that trades are sales and that all
sales are equal. Context is important, and so we find that addressing
problems concerning automated trades in a commodities trading
environment (FF1) is not reasonably pertinent to addressing problems
concerning personnel in a retail sales environment (FF2).

DECISION
Appeal 2012-001734
Application 10/457,479

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The decision of the Examiner to reject claims 1, 4, 5, 7-11, 14, 15, 17-
21, 24, 25, 27-30, and 34-42 is REVERSED.

REVERSED

klh/nlk