Ex Parte Burrell et al

Board of Patent Appeals and Interferences

Mar 7, 2012

11515279 (B.P.A.I. Mar. 7, 2012)

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.
11/515,279 08/31/2006 C. Austin Burrell 05-484.0001 7447
45309 7590 03/07/2012
WILLIAMS MULLEN
222 CENTRAL PARK AVENUE
SUITE 1700
VIRGINIA BEACH, VA 23462
EXAMINER
NIQUETTE, ROBERT R
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
03/07/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte C. AUSTIN BURRELL, NIGEL BANDY,
and TERRY RAMSDEN
____________

Appeal 2011-001211
Application 11/515,279
Technology Center 3600
____________

Before: ANTON W. FETTING, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-001211
Application 11/515,279

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-26. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002).
The claimed invention is directed to facilitating the trading of
instructions, investments, securities, and assets between buyers and sellers in
a trading environment (Spec., para. [0002]). Claim 1, reproduced below, is
further illustrative of the claimed subject matter.
1. An electronic trading system comprising:
an exchange processing device operative to:
electronically display a plurality of fungible
trading elements;
process trading operations for a selected element
of the trading elements;
and
electronically assessing a risk factor for the trade
operations;
a back office processing device coupled to the exchange
processing device, the back office processing device operative
to electronically provide settlement operations related to the
settlement of the trade operations of the exchange processing
device; and
a custodian processing device coupled to the back office,
the custodian processing device operative to:
electronically verify ownership of the selected
trade element, including authenticating a
dematerialization of the trading element, wherein
dematerialization verifies proper ownership of the
selected trade element; and
electronically exchange ownership assignment of
the trading element in response to a settlement command
from the back office, if the risk factor is below a
threshold value, performing the exchange in a straight
through processing manner.

Appeal 2011-001211
Application 11/515,279

3
Claims 1-26 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Goodman (US 2006/0059077 A1, pub. Mar. 16, 2006) in view of Nagel
(US 7,152,047 B1, iss. Dec. 19, 2006) and Toffey (US 2004/0236668 A1,
pub. Nov. 25, 2004).
We REVERSE.

ISSUE
Did the Examiner err in asserting that Nagel’s authentication of
documents corresponds to “electronically verify ownership of the selected
trade element, including authenticating a dematerialization of the trading
element, wherein dematerialization verifies proper ownership of the selected
trade element,” as recited in independent claim 11?

FINDINGS OF FACT
Definitions
FF1. Dematerialization is the process of converting
physical shares (share certificates) into an electronic form
(http://www.appuonline.com/appu/investment/trading/d-mat.html) (last
visited: Mar. 5, 2012).
FF2. Dematerialization is the move from physical certificates to
electronic book keeping. Actual stock certificates are slowly being removed
and retired from circulation in exchange for electronic recording
(http://www.investopedia.com/terms/d/dematerialization.asp#axzz1oGLLdJ
BR) (last visited: Mar. 5, 2012).

1 We choose independent claim 1 as representative of independent claims 1,
10, and 18. See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2011-001211
Application 11/515,279

4
Specification
FF3. Not specifically illustrated, the seller may first have to
dematerialize the equity wishing to be exchanged. This step may be done
using any known techniques, such as using a custody or settlement system.
For example, a private company share may be dematerialized using a service
from Cedel, Euroclear, DTC, Sega, or any other entity. Then, using -a Swift
interface, the ownership of this equity may be verified (para. [0034]).

Nagel
FF4. Nagel discloses a system which provides authentication of
originality of a document, by authenticating that the recording medium is
authentic, that the document content is unaltered, and that the document
content is imprinted on the appropriate unique recording medium (25:16-
21).

ANALYSIS
We are persuaded the Examiner erred in asserting that Nagel’s
authentication of documents corresponds to “electronically verify ownership
of the selected trade element, including authenticating a dematerialization of
the trading element, wherein dematerialization verifies proper ownership of
the selected trade element,” as recited in independent claim 1 (App. Br. 7-
13; Reply Br. 1-7). Dematerialization of equity has very specific definitions
in the financial arts (FF1, FF2). The disclosure of dematerializing equity in
the Specification comports with these definitions (FF3). The Examiner
solely cites Nagel for disclosing the recited dematerialization (Exam’r’s

Appeal 2011-001211
Application 11/515,279

5
Ans. 4). However, Nagel’s authentication of the originality of documents
makes no mention of authenticating equity, and certainly not authenticating
the conversion of physical equity into electronic form (FF4).

DECISION
The decision of the Examiner to reject claims 1-26 is REVERSED.

REVERSED

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