Ex Parte Lin

Board of Patent Appeals and Interferences

Jul 10, 2012

10903176 (B.P.A.I. Jul. 10, 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.
10/903,176 07/30/2004 Cheng-Yee Lin BEA920040010US1 3509
51167 7590 07/10/2012
WALTER W. DUFT
8616 MAIN STREET
SUITE 2
WILLIAMSVILLE, NY 14221
EXAMINER
VIZVARY, GERALD C
ART UNIT PAPER NUMBER
3684
MAIL DATE DELIVERY MODE
07/10/2012 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte CHENG-YEE LIN 8
___________ 9
10
Appeal 2011-001800 11
Application 10/903,176 12
Technology Center 3600 13
___________ 14
15
16
Before ANTON W. FETTING, BIBHU R. MOHANTY, and 17
MICHAEL W. KIM, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL 20
Appeal 2011-001800
Application 10/903,176

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STATEMENT OF THE CASE1 1

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed May 4, 2010) and Reply Brief (“Reply Br.,” filed October 23,
2010), and the Examiner’s Answer (“Ans.,” mailed August 24, 2010).
Cheng-Yee Lin (Appellant) seeks review under 35 U.S.C. § 134 (2002) 2
of a final rejection of claims 6-10 and 41-78, the only claims pending in the 3
application on appeal. We have jurisdiction over the appeal pursuant to 4
35 U.S.C. § 6(b) (2002). 5
The Appellant invented coordinating the exchange of information 6
between transaction partners in order to facilitate the selection and 7
acquisition of goods, services or other subject matter by client entities from 8
supplier entities. (Specification 1:5-9). 9
An understanding of the invention can be derived from a reading of 10
exemplary claim 6, which is reproduced below [bracketed matter and some 11
paragraphing added]. 12
6. An automated trading support method, comprising, 13
prior to the commencement of said automated trading: 14
Appeal 2011-001800
Application 10/903,176

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[1] notifying 1
one or more machine-implemented supplier transaction 2
agents 3
of trading requirements 4
specified by a machine-implemented client transaction 5
agent, 6
said notifying comprising 7
communicating said trading requirements 8
in computer-readable form 9
to said one or more supplier transaction agents; 10
[2] said trading requirements comprising 11
interface description information 12
for creating an automated service interface 13
that interoperates with an automated trading application 14
implemented by or on behalf of a client; 15
[3] said automated service interface implementing 16
one or more interface operations 17
that said client automated trading application 18
can invoke 19
to facilitate product or service acquisition; 20
[4] advising said client transaction agent 21
of automated services 22
offered by or on behalf of one or more suppliers 23
that conform to said trading requirements, 24
said advising comprising 25
communicating information 26
about said automated services in computer 27
readable form to said client transaction agent; 28
and 29
Appeal 2011-001800
Application 10/903,176

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[5] whereby said client automated trading application 1
can subsequently invoke 2
said automated services 3
to perform said automated trading. 4
The Examiner relies upon the following prior art: 5
Buhannic US 2002/0038276 A1 Mar. 28, 2002
Balabon US 2006/0026090 A1 Feb. 2, 2006
Claims 6-10 and 41-78 stand rejected under 35 U.S.C. § 103(a) as 6
unpatentable over Buhannic and Balabon. 7
ISSUES 8
The issue of obviousness turn primarily on whether Balabon is prior art. 9
FACTS PERTINENT TO THE ISSUES 10
The following enumerated Findings of Fact (FF) are believed to be 11
supported by a preponderance of the evidence. 12
Facts Related to the Prior Art 13
Buhannic 14
01. Buhannic is directed to tracking the status of a securities trade 15
on a real time basis. Buhannic ¶ 0002. 16
02. Strategy server 150 stores trading strategy profiles for various 17
buy side clients, such as individual investors or institutional 18
investors, and includes the appropriate logic to initiate execution 19
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Application 10/903,176

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of a trade for a buy side client when the conditions or limits in the 1
client's strategy profile are satisfied or met. Buhannic ¶ 0015. 2
Balabon 3
03. Balabon is directed to reducing the deficiencies of current 4
trading systems by increasing the quality of communications 5
between buyers and sellers and eliminating information leakage 6
that occurs before a trade can be completed. Balabon ¶ 0057. 7
04. FIGS. 1-2 depict blind-side trade offering and acceptance 8
between a first user at trading client 1000 connected with a second 9
user at trading client 1010 via communication network 1005 in 10
accordance with an embodiment of the present invention. In FIG. 11
1, trading client 1000 receives an IOI entered by the first user 12
(step 100) specifying an interest in trading a financial instrument; 13
the first user may or may not specify a side of trade in connection 14
with the IOI. Trading client 1000 subsequently provides the first 15
user's IOI without the side of trade (if one was specified) to others 16
(step 110) by, for example, sending the IOI to a central trading 17
server for display in an order book. Trading client 1010 displays 18
the order book listings to the second user, and receives from the 19
second user terms of an offer, including a side of trade, to be made 20
on the IOI (step 120). Trading client 1010 then submits the offer 21
without the side of trade (step 130) to trading client 1000 for 22
acceptance or rejection by the first user (step 140). Balabon ¶ 23
0059. 24
Appeal 2011-001800
Application 10/903,176

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ANALYSIS 1
We are persuaded by the Appellant’s argument that Buhannic is not prior 2
art. Appeal Br. 20-22. Examiner applies Balabon ¶ 0059 for the timing of 3
limitation [5], in which Balabon presents an indication of interest prior to 4
trading. Appellant contends Balabon’s six page provisional application does 5
not support this and the provisional application filing date is needed for 6
Balabon to be prior art. Examiner’s response at Answer 55 points to the 7
execution as being some form of indication of interest. The indication of 8
interest is not the issue. Rather it is the timing of presenting the information 9
recited in the prior limitations relative and prior to trading that is at issue. 10
We agree with Appellant that the provisional application fails to describe 11
such timing as the Examiner relied upon for the rejection. 12
CONCLUSIONS OF LAW 13
The rejection of claims 6-10 and 41-78 under 35 U.S.C. § 103(a) as 14
unpatentable over Buhannic and Balabon is improper. 15
DECISION 16
The rejection of claims 6-10 and 41-78 is reversed. 17
18
REVERSED 19
20
21
JRG 22