Ex Parte Lutnick et al

Patent Trial and Appeal Board

Aug 5, 2016

12631208 (P.T.A.B. Aug. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/631,208 12/04/2009
63710 7590 08/09/2016
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
HOW ARD 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.
09-2324 1312
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
08/09/2016 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 HOW ARD W. LUTNICK,
MARK MILLER, ANDREW FISHKIND,
KEVIN FOLEY, and BRIAN GAY
Appeal2014-006609 1
Application 12/631,2082
Technology Center 3600
Before MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1. Our decision references Appellants' Appeal Brief ("Appeal Br.," filed
November 7, 2013) and Reply Brief ("Reply Br.," filed May 19, 2014), the
Examiner's Answer ("Ans.," mailed March 18, 2014), and Final Office
Action ("Final Act.," mailed September 25, 2012).
2. Appellants identify CFPH, L.P., as the real party in interest (Appeal
Br. 3).
Appeal2014-006609
Application 12/631,208
CLAIMED INVENTION
Appellants' claimed invention relates generally to "[a] trading
platform and trading method that may allow access to additional pools of
liquidity" (Abstract).
Claim 1, reproduced below with added bracketed notations, is
illustrative of the subject matter on appeal:
1. An apparatus comprising:
[a] a computing device; and
[b] a non-transitory machine readable medium having
stored thereon a plurality of instructions that when executed by
the computing device cause the apparatus to:
[c] receive an indication of an order for an alternative
trading system from a source, in which the order defines a side
of a trade for a financial instrument;
[ d] determine a time period for an intentional delay
between receiving the indication of the order and searching a
dark pool of liquidity for a matching order to the order that is to
be imposed by the alternative trading system on the order, in
which the matching order defines the opposite side of the trade;
[ e] intentionally delay searching the dark pool for the
period of time;
[ f] determine that the period of time has passed from
receipt of the order;
[g] in response to determining that the period of time has
passed, query a plurality of order management systems to search
the dark pool of liquidity for the matching order to the order, in
which each respective order management system securely stores
trading intentions of a respective buy-side participant of the
alternative trading system;
[h] receive an indication of the matching order in response
querying; and
[i] in response to receiving the indication of the matching
order, facilitate execution of the trade.
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Appeal2014-006609
Application 12/631,208
REJECTIONS
Claims 1, 4, 5, 7, 12, 13, 16, and 17 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Balabon (US 2006/0026090 Al, pub. Feb. 2,
2006) and Lupien (US 6,098,051, iss. Aug. 1, 2000).
Claims 2, 3, and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Balabon, Lupien, and Gianakouros (US 2006/0031157
Al, pub. Feb. 9, 2006).
Claims 8-11, 14, and 15 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Balabon, Lupien, and Daley (US 2005/0171891 Al, pub.
Aug. 4, 2005).
ANALYSIS
Independent claims 1 and 17, and dependent claims 4, 5, 7, 12, 13, and 16
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 1under35 U.S.C. § 103(a) because the
combination of Balabon and Lupien fails to disclose or suggest
"determin[ing] a time period for an intentional delay between receiving the
indication of the order and searching a dark pool of liquidity for a matching
order to the order that is to be imposed by the alternative trading system on
the order ... , as recited by limitation [ d] in independent claim 1 (see Appeal
Br. 7-11; see also Reply Br. 2-5).
In the Final Office Action, the Examiner finds that Balabon discloses
the argued limitation (see Final Act. 3 (citing Balabon i-f 66-68, 243-24 7,
claims 40-42, Fig. 7)).
Balabon is directed to a system for trading financial instruments
which inter alia protects information to "eliminat[ e] information leakage
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Appeal2014-006609
Application 12/631,208
that occurs before a trade can be completed" (Balabon if 57). Balabon
discloses a condition based trade order access embodiment wherein
trading server 1020 provides to trading client 1000 an order book
listing that includes an order to trade a financial instrument
specifying a condition (e.g., a time period delay, occurrence of a
market event, etc.) to be met in order for the order to be accessed
for trading (step 700). Trading client 1000 displays the order and
associated access condition to a user and subsequently receives
the user's acceptance of the access condition (step 710). Trading
client 1000 notifies trading server 1020 of the user's acceptance
(step 720), and trading server 1020 waits until the access
condition has been met (step 730) before allowing the user to
access the order (step 740).
(Id. if 67). Balabon further discloses that its order access conditions
embodiment
allows liquidity providers (e.g., any trader who places a limit
order into an order book) to restrict other traders from accessing
their quotes by including an access condition with their order.
This trading method allows the liquidity provider to set a
minimum and maximum time period in seconds that he wants a
prospective liquidity taker delayed in accessing his quote.
(Id. if 243).
We have reviewed the cited portions of Balabon and agree with
Appellants that Balabon fails to disclose or suggest the argued limitation.
More particularly, we agree with Appellants that "before any access
condition is applied [in Balabon], a matching order to a liquidity provider's
order has already been found (i.e., the counter order that the liquidity taker is
submitting)" (Ans. 11 ). Thus, we fail to see, and the Examiner does not
adequately explain, how Balabon's disclosure that "[t]rading client 1000
displays the order and associated access condition to a user and subsequently
receives the user's acceptance of the access condition" (Balabon if 67)
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Appeal2014-006609
Application 12/631,208
discloses or suggests "determin[ing] a time period for an intentional delay
between receiving the indication of the order and searching a dark pool of
liquidity for a matching order," as recited by limitation [ d] of independent
claim 1.
Responding to Appellants' argument in the Response to Argument
section of the Answer, the Examiner takes the position that Balabon
states that ["]a financial instrument [can] specify[] a condition
(e.g., a time period delay, occurrence of a market event, etc.) to
be met in order for the order to be accessed for trading["]
([i-f[ 67]). The examiner argues that one of ordinary skill reading
the reference would recognize that by not making the order
accessible or be made available for matching until the time
period delay has been met can be interpreted that a match is not
being made until the time period has elapsed.
(Ans. 5).
The difficulty with the Examiner's finding is that limitation [ d]
requires an intentional delay between receiving the indication of the order
and searching for a matching order, whereas the cited portion of Balabon
discloses finding a matching order and then imposing a condition (see
Balabon i167). As such, we agree with Appellants that Balabon discloses "a
delay of an execution and not a delay of any search- the search has already
been done to find the match" (Ans. 11 ).
And for the first time in the Examiner's Answer, the Examiner also
relies on Lupien to disclose the argued limitation (Ans. 5---6). The Examiner
finds that Lupien "also teaches [the argued limitation] as a function of its
trading system (a crossing network)" (id. (citing Lupien, col. 2, 11. 49-51,
col. 4, 11. 27---67, col. 24, 11. 8-9, claim 15, 11. 3-10)). However, we agree
with Appellants that the newly cited portions of Lupien fail to disclose or
suggest the argued limitation (see Reply Br. 2-5).
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Appeal2014-006609
Application 12/631,208
In this regard, we note that Lupien is directed to "a continuous
crossing network that matches buy and sell orders based upon a satisfaction
and size profile and that can output price discovery information" (Lupien,
col. 1, 11. 9-14). More particularly, Lupien discloses that its
satisfaction density profile is a two-dimensional grid or matrix
(which could also be represented as a two-dimensional graph or
in another two-dimensional format), one dimension being price
and the second dimension being size of transaction, that as a
whole characterizes the trader's degree of satisfaction for a
transaction at each (price, size) coordinate.
(Id. at col. 4, 11. 8-14). Lupien discloses "a batch process in which multiple
traders enter satisfaction density profiles that represent either buy or sell
orders for a particular stock ... where orders are matched at set times" (id.
at col. 4, 11. 31---67). Lupien also discloses "[t]he matching process can take
place in real time or at predetermined time intervals, e.g., every day or every
hour" (id. at col. 24, 11. 8-9).
However; we agree with Appellants that "[t]here is no searching
performed in the cited portions [of Lupien] and therefore there can be no
delay relative to a searching taught or suggested in these portions" (Reply
Br. 4 ). That is, independent claim 1 requires an intentional delay between
receiving the indication of the order and searching for a matching order
whereas Lupien matches already pending orders at a particular time based
upon a satisfaction and size profile (see Lupien, col. 4, 11. 7-14, 31---67).
Thus, we agree with Appellants that neither Balabon nor Lupien, alone or in
combination, discloses or suggests "determin[ing] a time period for an
intentional delay between receiving the indication of the order and searching
a dark pool of liquidity for a matching order," as recited by limitation [ d] of
independent claim 1.
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Appeal2014-006609
Application 12/631,208
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claim 1under35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner's rejections of claims 2-16, which depend
therefrom.
Independent claim 17
Independent claim 17 includes a limitation similar to limitation [ d] in
independent claim 1, and is rejected based on the same rationale applied
with respect to independent claim 1 (see Final Act. 5). Thus, for the same
reasons, we also do not sustain the Examiner's rejection of independent
claim 17 under 35 U.S.C. § 103(a).
DECISION
The Examiner's rejections of claims 1-17 under 35 U.S.C. § 103(a)
are sustained.
REVERSED
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