Ex Parte Lutnick et al

Patent Trial and Appeal Board

Jun 28, 2016

12204341 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/204,341 09/04/2008
63710 7590 06/30/2016
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Howard W. Lutnick
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
08-2237 4826
EXAMINER
BER ONA, KIMBERLY SUE
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
06/30/2016 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):
patentdocketing@cantor.com
lkorovich@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 HOWARD W. LUTNICK, DEAN P. ALDERUCCI,
ANDREW FISHKIND, BRIAN L. GAY, KEVIN FOLEY,
MARK MILLER, and CHARLES PLOTT
Appeal2013-007911
Application 12/204,341
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1--4, 6, 7, 9, 12, 14, 16, 20-30, 32--40, 42, 44--50 and 52-
58, which are all the claims pending in the application. We have jurisdiction
under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We AFFIRM-IN-PART.
Appeal2013-007911
Application 12/204,341
THE INVENTION
The Appellants' claimed invention is directed to cancellation timing
in an electronic marketplace and trading system (Spec. 1, lines 4--19).
Claim 1, reproduced below with the numbering in brackets added, is
representative of the subject matter on appeal.
1. A method comprising:
[ 1] receiving, by a computer system of a marketplace from a
broker participant in the marketplace, an indication of a firm order, in
which the firm order defines a side of a trade for a financial
instrument, in which the firm order includes an order to execute the
trade without additional authorization from the broker participant;
[2] determining a first period of time that is not a machine
processing time for the firm order;
[3] intentionally constraining, by the computer system, a
cancellation of the firm order by the broker participant for the first
period of time;
[ 4] transmitting, by the computer system, order queries asking
whether a matching order to the firm order is securely stored in each
of a plurality of order management systems of respective buy-side
participants, in which the plurality of order management systems
collectively store a dark pool of liquidity accessible to the
marketplace;
[ 5] receiving, by the computer system, a first request to cancel
the firm order after the first period of time;
[ 6] receiving, by the computer system of the marketplace, an
indication that a trade should be executed fulfilling at least a part of
each of the firm order and the matching order without a negotiation
involving either party to the trade, in which the indication is received
after the first period of time and after receiving the first request to
cancel; and
[7] cancelling, by the computer system, the firm order after the
first period of time has passed.
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Application 12/204,341
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
W aelbroeck et al.
Balabon
Kemp, II et al.
Harrington et al.
Everaert et al.
Arnold et al.
US 2004/0034591 Al
US 2005/0075963 Al
US 7,124,110 Bl
US 2008/0294544 Al
US 2008/0082439 Al
US 2008/0133393 Al
The following rejections are before us for review:
Feb. 19,2004
Apr. 7, 2005
Oct. 17, 2006
Nov. 27, 2008
Apr. 3, 2008
June 5, 2008
1. Claims 1--4, 6, 7, 9, 12, 14, 16, 20-30, 32--40, 42, 44--50, and
52-58 are rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
2. Claims 1--4, 6, 7, 9, 12, 14, 16, 20-30, 32--40, 42, 44--50, and
52-58 are rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite.
3. Claim 14 is rejected under 35 U.S.C. § 112, fourth paragraph.
4. Claims 1--4, 14, 16, and 52-54 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Waelbroeck and Balabon.
5. Claims 20-24, 28, 30, 57, and 58 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Waelbroeck.
6. Claims 32-38, 40, 42, 44, and 46-50 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Waelbroeck and Harrington.
7. Claims 6, 7, 9, 55, and 56 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Waelbroeck, Balabon, and Everaert.
8. Claim 12 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Waelbroeck, Balabon, and Kemp, II.
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Application 12/204,341
9. Claims 25-27 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Waelbroeck and Arnold.
10. Claim 29 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Waelbroeck and Kemp, II.
11. Claims 39 and 45 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Waelbroeck, Harrington, and Kemp, II.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 1
ANALYSIS
Rejection under 35 USC§ 112,first paragraph
The Examiner has rejected claims 1--4, 6, 7, 9, 12, 14, 16, 20-30,
32--40, 42, 44--50, and 52-58 under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement (Final Act. 2---6).
This rejection covers twenty issues that are listed in paragraphs 6-26 of the
Final Action and pages 2-10 of the Answer.
In contrast, the Appellants argue that the rejection of these claims is
improper and have provided arguments in response to each of these
individual points at pages 11-27 of the Appeal Brief.
We agree with the Appellants. The rejection made in the Final
Rejection is extensive, covering twenty different claims. We have
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2013-007911
Application 12/204,341
thoroughly reviewed the rejection in light of the arguments presented in the
Appeal Brief, and here determine that the Appellants' well detailed
arguments are persuasive. Rather than simply reiterate the arguments put
forth by the Appellants, we acknowledge that these arguments are persuasive
and the rejection made under 35 U.S.C. § 112, first paragraph, is not
sustained.
Rejection under 35 USC§ 112, second paragraph
The Examiner has rejected claims 1--4, 6, 7, 9, 12, 14, 16, 20-30,
32--40, 42, 44--50, and 52-58 under 35 U.S.C. 112, second paragraph, as
being indefinite (Final Act. 6, 7, Ans. 10-12).
In contrast, the Appellants have argued that the rejection is improper
(App. Br. 28-30).
We agree with the Appellants. Claim 1 is rejected as being unclear as
to how an order can be both filled entirely and canceled (Final Act. 6) but
the rejected citation simply shows that the order may be canceled at some
point as well.
In claims 1, 20, 32, 36, and 42, the claim term "machine processing
time" has been cited as having no metes and bounds but this is an issue of
claim breadth and not indefiniteness. Here, one of ordinary skill in the art
would understood what is claimed when the claims are read in light of the
Specification.
For claim 1, the claim has been rejected as being unclear as to when
the request to cancel is received but this position taken in the Final Action at
page 7 simply goes to claim breadth, not indefiniteness,
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Claim 20 has been rejected as being unclear if the "computing device''
is part of the system (Final Act. 7) but in the context of the claim it is clear
what is being referred to and the claim is not indefinite.
Claim 56 has been rejected on the ground that the "indication" could
refer to either the indication of claim 6 or claim 55 (Final Act 7). We have
considered the Appellants' arguments at page 30 of the Appeal Brief but
these are not deemed persuasive. Here it is unclear in claim 56 which
"indication" is being referred to. For this reason, this rejection is sustained.
With regards to the rejection of claim 56 under 35 U.S.C. § 103(a) below,
the rejection is reviewed to the extent understood.
For these above reasons, the rejection under§ 112, second paragraph,
is not sustained, except with respect to claim 56.
Rejection under 35 US.C. § 112,fourth paragraph
The Examiner has rejected claim 14 under 35 U.S.C. § 112, fourth
paragraph, as not incorporating the limitations of claim 1. Specifically, the
rejection asserts that the trade in claim 1 "cannot take place in claim 14 if it
is cancelled prior to the trade taking place" (Ans. 8).
In contrast, the Appellants have argued that this rejection is improper
(App. Br. 30-34).
We agree with the Appellants. Here, claim 14 merely sets forth
further limitations to claim 1 if a second request to cancel the firm order is
received during the first time period. For this reason, this rejection of
claim 14 is not sustained.
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The Appellants first argue that the rejection of claim 1 is improper
because the cited prior art fails to disclose claim limitation [ 1] directed to a
"firm order [that] includes an order to execute the trade without additional
authorization for the broker participant" (App. Br. 35, 36).
In contrast, the Examiner has determined that the cited claim
limitation is found in Waelbroeck at paras 74, 81, and 84 (Ans. 12, 13).
We agree with the Examiner. Here the cited claim limitation requires
a "firm order" and this is disclosed in the embodiment in paragraph 81 of
W aelbroeck in which an end client response order goes to a matching system
that executes the trade if there is a match. This embodiment (see also
para. 86), unlike that of paragraphs 7 4 and 84, does not require indicators of
interest or any further notification of the original party. The Appellants also
argue at page 40 that Waelbroeck at paragraph 84 teaches "negotiation back
and forth" but this neglects the disclosure at paragraph 81 described above
which describes a "matching process" supporting a "firm order" as claimed.
The Appellants also argue that the rejection of claim 1 is improper for
failure to show "dark pools of liquidity" (App. Br. 36-40). We agree with
the Examiner's rationale and findings in this regard as well to claim 1. Note
that para. 69 of Waelbroeck discloses "hidden" orders which serve as "dark
pools" under a broadest reasonable interpretation. For these above reasons,
the rejection of claim 1 is sustained. The Appellants provide the same
arguments for claims 28, 3 8, and 40, and the rejection of these claims is
sustained as well.
The Appellants have also argued that the rejection of claims 3 and 4 is
improper (App. Br. 42, 43). The argued claim limitations are drawn to the
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period of time to be "randomly determined" and for a time period of "about
20 seconds and about 1 minute." In contrast, the Examiner has asserted that
determining random time periods is well known and that the claimed time
periods are within normal, obvious ranges. We agree with the Examiner's
rationale. For these above reasons, the rejection of claims 3 and 4 is
sustained. The Appellants provide the same arguments for claims 22, 23,
35, 47, and 48 and the rejection of these claims is sustained as well.
The Appellants argue that the rejection of claim 6 is improper for
failure to disclose "an indication of whether the time period has passed"
(App. Br. 44). We agree with and adopt the Examiner's findings and
rationale presented in the Final Action at page 30. Note that a wide variety
of systems use indicators for elapsed time periods. Here, the cited
combination would have been obvious for the reasons set forth in the
rejection and combined teachings which include Everaert at para. 105 and
this rejection is sustained.
The Appellants argue that the rejection of claim 12 is improper which
relates to preventing a change in "price" and a "quantity" associated with the
firm order (App. Br. 44, 45). The Examiner has cited to the claim
limitations being suggested by Waelbroeck (para. 85) and Kemp (Ans. 15).
The portions of these references cited fail to disclose this limitation as
claimed. For example, Waelbroeck discloses that prices and quantity cannot
be reduced, but can still be increased, which would be a "change." The
citations to Kemp fail to disclose this as well and a prima facie case has not
been established. Accordingly, the rejection of claim 12, and claims 29, 39,
and 44--46 which are similarly argued is not sustained.
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The Appellants argue that claim 14 has not been properly rejected as
no rationale has been provided (App. Br. 45--47). The Examiner has not
provided a proper rationale for claim 14 under 35 U.S.C. § 103(a) (see Final
Act. 13). Therefore, this rejection is not sustained.
With regard to claim 20, the Appellants provide similar arguments to
those of claim 1 addressed above and also argue that the rejection of this
claim is improper for failure to disclose the last paragraph of the claim, but
only provide arguments for the "order management system" (App. Br. 46-
4 7). A statement that merely points out what a claim recites will not be
considered an argument for separate patentability of the claim. 3 7 C.F .R.
§ 41.37(c)(l)(iv).
In contrast, the Examiner has determined that the rejection is proper
(Ans. 15, 16). We agree with the Examiner as Waelbroeck at para. 81
discloses the argued "order management system." For these reasons, the
rejection of claim 20 is sustained.
The Appellants argue that the rejection of claims 25 and 26 is
improper which are drawn to the "providing an indication whether the time
period has passed to the buy-side participant" and including "an indication
of the remaining time" and a "color" for the interface (App. Br. 47, 48). The
Appellants also argue that the rejection of claim 27 is improper which relates
to "an indication of whether the time period has passed to the broker
participant" (App. Br. 48, 49). The Appellants have provided the same
arguments for claims 32, 33, 34, 49, 55, and 56 as well which are also
directed to types of indications (App. Br. 49--52, 58).
In contrast, the Examiner has determined that these rejections are
proper (Ans. 16-19). We agree with and adopt these findings by the
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Application 12/204,341
Examiner. Further, the claim limitations are essentially merely directed to
various types of indications of statuses in the system including the use of
colors which are well known indicators in many systems and here their
claimed use would have been obvious. In KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398 (2007) the Court stated that when considering obviousness that
"the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ." Id. at418.
For these reasons the rejections of claims 25-27, 32-34, 49, 55, and 56
are sustained.
The Appellants argue that the rejection of claim 36, which recites, in
part, that "the time period includes a period of time that is unrelated to a
computer processing time such that evidence of a human action in the
finding is suppressed" is improper and not supported. In contrast, the
Examiner cites to para. 71 of the Final Action as fully explaining the
rejection (Ans. 17). We agree with the Appellants. Here, the rejection is
incomplete in addressing the claim limitations and this rejection is not
sustained.
The Appellants similarly argue that the rejection of claim 37 is
incomplete (App Br. 53). The Appellants recite the limitations of the claim
but provide no specific arguments to show that the rejection is improper
(App. Br. 53). A statement that merely points out what a claim recites will
not be considered an argument for separate patentability of the claim.
37 C.F.R. 41.37(c)(l)(iv). Accordingly, this rejection is sustained.
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With regard to claim 42, in addition to some of the arguments listed
above, the Appellants also argue that the rejection fails to account for the
limitation that "the identification identifies whether a time period during
which the firm order may not be canceled by the broker participant has
expired" as well as the limitation in the third paragraph of the claim (App.
Br. 54, 55). In contrast, the Examiner has determined that the rejection of
record is proper (Ans. 18, Final Act. 26-28). We agree with and adopt the
Examiner's findings and rationale. Note again that a wide variety of systems
use indicators for elapsed time periods and here their claimed use would
have been obvious. Here, the cited combination would have been obvious
for the reasons set forth in the rejection.
With regard to claim 53, the Appellants argue that the rejection does
not teach "preventing communication" (App. Br. 56). We agree with and
adopt the Examiner's findings at pages 14 and 15 of the Answer. The
rejection of claim 53 is, therefore, sustained.
With regard to claim 54, the Appellants argue that the prior art does
not teach anything designed to "simulate human action" (App. Br. 57). The
Examiner's rationale for this rejection at page 18 of the Answer is not
deemed persuasive as a prima facie case has not been established and this
rejection is not sustained.
The Appellants have provided no separate arguments for claims 2, 7,
9, 16, 21, 24, 30, 50, 52, 57, and 58, and the rejections of these claims are,
therefore, sustained.
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CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1--4, 6, 7, 9, 12, 14, 16, 20-30, 32--40, 42, 44--50, and 52-58
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1--4, 6, 7, 9, 12, 14, 16, 20-30, 32--40, 42, 44--50, 52-55,
57, and 58 under 35 U.S.C. § 112, second paragraph. We conclude that
Appellants have not shown that the Examiner erred in rejecting claim 56
under U.S.C. § 112, second paragraph.
We conclude that Appellants have shown that the Examiner erred in
rejecting claim 14 under 35 U.S.C. § 112, fourth paragraph, as being
indefinite.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1--4, 6, 7, 9, 16, 20-28, 30, 32-35, 37, 38, 40, 42, 47-50,
52, 53, and 55-58 under 35 U.S.C. § 103(a) as listed in the Rejections
section above.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 12, 14, 29, 36, 39, 44-46, and 54 under 35 U.S.C. § 103(a)
as listed in the Rejections section above.
DECISION
The Examiner's rejections of claims 1--4, 6, 7, 9, 16, 20-28, 30, 32-
35, 37, 38, 40, 42, 47-50, 52, 53, and 55-58 are affirmed.
The Examiner's rejections of claims 12, 14, 29, 36, 39, 44--46, and 54
are reversed.
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No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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