Ex Parte Lundberg et al

Patent Trial and Appeal Board

Jun 25, 2014

10424997 (P.T.A.B. Jun. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
___________

Ex parte JONAS LUNDBERG and ULF AHLENIUS
___________

Appeal 2012-001780
Application 10/424,997
Technology Center 3600
___________

Before HUBERT C. LORIN, ANTON W. FETTING, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 4–7, 9, 11, 12, 15–18, 20, and 22–26.
We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We REVERSE.

Appeal 2012-001780
Application 10/424,997

2
BACKGROUND
Appellants’ invention is directed generally to a method and system for
improved automated trading of interest rate swap contracts. Spec. 1:5–6.
Claim 1 is illustrative:
1. A method of trading a swap interest rate contract in a
computer-implemented automated exchange, the exchange
comprising at least one computer for matching incoming bids
and offers input from a number of input terminals connected to
the exchange and a memory unit for storing active unmatched
bid and offers received by the exchange, the method comprising
the steps of:
a) the computer-implemented automated exchange
receiving a bid/offer for a first contract in a first interest rate
instrument having fixed payments from a first trading party;
b) the computer-implemented automated exchange
receiving a corresponding bid/offer matching the bid/offer
received in step a) from a second trading party;
c) the computer-implemented automated exchange
matching the bids and offers received in steps a) and b),
respectively; and
d) the computer-implemented automated exchange
automatically creating and adding a second contract between
said first and second trading parties in a second interest rate
instrument having floating payments to the bids and offers
matched in step c) upon the completion of the matching step
thereby forming a combined swap deal including the trade of
the first interest rate instrument and the trade of the second
interest rate instrument between said first and second trading
parties.
Appellants appeal the following rejection: Claims 1, 4–7, 9, 11, 12,
15–18, 20, and 22–26 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Mosler (US 6,304,858 B1, issued Oct. 16, 2001), Silverman
(US 5,924,082, issued Jul. 13, 1999), and Garber (US 5,963,923, issued
Oct. 5, 1999).
Appeal 2012-001780
Application 10/424,997

3
ANALYSIS
Each of independent claims 1, 12, and 23 recite language substantially
identical to:
automatically creating and adding a second interest rate contract
between said first and second trading parties in a second interest
rate instrument having floating payments to the bids and offers
matched upon the completion of the matching by the computer
thereby forming a combined swap deal including the trade of
the first interest rate instrument and the trade of the second
interest rate instrument between said first and second trading
parties.
We are persuaded by Appellants’ argument that Garber does not
disclose automatically creating and adding a second interest rate contract
having floating payments to form a combination trade with a first interest
rate contract having fixed payments. App. Br. 14. The Examiner maintains
that “Garber discloses that it was old and well-known to automatically create
and add contracts in an automated exchange.” Ans. 12. The Examiner bases
this on the disclosure in Garber of a “complementary trade” provided by a
Market Maker. Ans. 4–5, citing Garber, col. 4, ll. 52–58. However, Garber
discloses a Market Maker “should continuously maintain a sized two-sided
bid/offer market for its designated products.” Col. 1, ll. 36–38. A
complementary trade, in Garber, is therefore merely the mirror image of the
other trade: if the first trade is a buy, the complementary trade is a sell of
the same product.
However, the claim requires a second contract that is more than
merely the mirror image of a first contract. In the claims, the first contract is
for a fixed-rate interest contract, and the second contract is for a floating-rate
interest contract. To create this second contract requires more than merely
flipping the buy/sell aspect of a trade. For this reason, we find Garber does
Appeal 2012-001780
Application 10/424,997

4
not disclose the automatic “creating and adding a second contract” with
terms comparable to those claimed. As a result, the Examiner has not set
forth a prima facie case of obviousness of claims 1, 12, or 23, nor of the
claims that depend from these independent claims. Therefore, we do not
sustain the rejection under 35 U.S.C. § 103(a) of claims 1, 4–7, 9, 11, 12,
15–18, 20, and 22–26.
DECISION
We reverse the rejection under 35 U.S.C. § 103(a) of claims 1, 4–7, 9,
11, 12, 15–18, 20, and 22–26.

REVERSED

mls