Ex Parte Mackay

Patent Trial and Appeal Board

Mar 28, 2016

12769070 (P.T.A.B. Mar. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121769,070 04/28/2010 ANTHONY MACKAY
104043 7590 03/30/2016
Tarter Krinsky & Drogin LLP
1350 Broadway
New York, NY 10018
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.
20044.0005 6856
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
03/30/2016 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):
patentdocket@tarterkrinsky.com
sformicola@tarterkrinsky.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY MACKAY
Appeal2014-003005
Application 12/769,070
Technology Center 3600
Decided: [Date of mailing]
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
BIBHU R. MONHANTY, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 38--42. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b). Appellant appeared for oral hearing on March 3,
2016.
Appeal2014-003005
Application 12/769,070
We REVERSE.
Claim 38 is illustrative:
38. An anonymous block trade matching system, comprising:
a server configured to receive order data for a user's order of a
security;
a core database having stored therein said order data; and,
a matching engine for finding an opposite side order matching said
order of a security said matching engine being configured to reject said
user's order if said order does not adhere to a minimum size threshold
assigned to said security; and
an alert generator configured to use said order data to transmit to at
least one prospective trading party an alert anonymously describing said
order.
Appellant(s) appeal the following rejection(s):
1. Claims 38--42 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the
subject matter which appli8cant regards as the invention.
2. Claims 38--42 under 35 U.S.C. § 101 because the claimed invention is
directed to non-statutory subject matter.
3. Claims 38--42 under 35 U.S.C. § 103(a) as unpatentable over Srivastava
(US 2004/0111356 Al, Jun. 10, 2004) in view of Huang (US
2008/0015965 Al, Jan. 17, 2008).
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Appeal2014-003005
Application 12/769,070
ISSUE
Did the Examiner err in rejecting claims 38--42 under 35 U.S.C.
§ 112, second paragraph because the recitations in claim 38 are clear when
read in light of Appellant's specification?
Did the Examiner err in rejecting claims 38--42 under 35 U.S.C. § 101
because the Examiner has failed to establish that the subject matter of the
claims relates to non-statutory subject matter?
Did the Examiner err in rejecting claims 38--42 under 35 U.S.C.§ 103
because the prior art does not disclose or suggest a matching engine
configured to reject a user's order if the order does not adhere to a minimum
size threshold assigned to the security?
ANALYSIS
Indefiniteness
The Examiner reasons that the subject matter of claim 3 8 is indefinite
because the disclosure only provides disclosure related to a general use
computer without a specific algorithm (Fin. Rej. 2). In response to the
Appellants' argument that there is no requirement to disclose a specific
algorithm, the Examiner relies on Aristocrat Techs. Australia Ply Ltd, v. Int 'l
Game Tech., 521 F.3d 1328 (Fed. Cir. 2008). The issue in Aristocrat,
however, was whether a patent's specification related to a cmnputer-
implemented invention disclosed sufficient stn1cture for the means-plus-
function limitation at issue under 35 U.S.C. § 112, i-f 6. Aristocrat, 521 F.3d
at 1332-33. The limitations in the claims at issue here are not in means-plus-
fonction fonn. Thus, the Aristocrat holding is inapposite to this case.
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Appeal2014-003005
Application 12/769,070
Therefore, we agree with the Appellants that there is no requirement
that an algorithm be disclosed in the specification.
Rejection under 35 U.S. C. § 1 OJ
We will not sustain the Examiner's rejection of the claims as being
directed to nonstatutory subject matter. We agree with the Appellants
arguments regarding this rejection. Specifically, we agree that as the claims
are not directed to a matching system which includes for example, a server
and a database, the claims are not directed to software per se or a signal
wave. In addition, it not apparent from the Final Rejection or the Answer
what language in the claims is nonfunctional descriptive material only or
how this relates to whether the claims recite statutory subject matter and a
prima facie case has not been established.
In view of the foregoing, we will not sustain this rejection.
Obviousness
The Appellants argue that the references do not disclose a matching
engine configured to reject an order if the order does not adhere to a
minimum size threshold. We agree. The Examiner relies on paragraphs 204
and 330 of Srivastava for teaching this subject matter. Paragraph 204 of
Srivastava discloses internal customers are allowed to use the system therein
disclosed at no commission as long as their deals do not dilute a paying
customer. Paragraph 330 discloses that each order has a minimum cross
amount. The cross amount relates to the spread between the seller's price
and the buyer's price of an order. The cross amount is not disclosed in
Srivastava as a minimum size threshold assigned to a security as required by
claim 38.
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Appeal2014-003005
Application 12/769,070
In view of the foregoing, we will not sustain the Examiner's rejection
of claims 38 or claims 39-42 dependent thereon.
DECISION
The decision of the Examiner is reversed.
ORDER
REVERSED
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