Ex Parte McGarry et al

Board of Patent Appeals and Interferences

Sep 21, 2010

09764782 (B.P.A.I. Sep. 21, 2010)

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.
09/764,782 01/17/2001 Glenn McGarry 101612-5010 US 7173
9629 7590 09/21/2010
MORGAN LEWIS & BOCKIUS LLP
1111 PENNSYLVANIA AVENUE NW
WASHINGTON, DC 20004
EXAMINER
BORLINGHAUS, JASON M
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
09/21/2010 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
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GLENN MCGARRY and WESLEY FEDORCHAK
____________

Appeal 2009-011598
Application 09/764,782
Technology Center 3600
____________

Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-011598
Application 09/764,782

2
STATEMENT OF THE CASE
The Appellants have filed a request for rehearing under 37 U.S.C.
§ 41.52 requesting that we reconsider our Decision of March 25, 2010 where
we affirmed the rejection of claims 56-58.

THE INVENTION
The Appellants’ claimed invention is directed to a streamlined system
for capturing trades that can be operated by the client at its site (Spec. 3:6-
10).

ANALYSIS
The Appellants argue that in the Decision on Appeal dated March 25,
2010 misapprehended or overlooked some points in reference to claims 56-
58 (Request 2). The Appellants first argue that standard for inherency has
not been met (Request 2). The Appellants argue second that the claimed
features are not taught or suggested in the prior art and that obviousness has
not been established (Request 3-4).
Claim 56, which is representative, requires that the “deal management
computer” is:
“[in communication with a plurality of internal systems, each of the
internal systems being associated with one or more product types, and
the captured information being routed to at least one of the plurality of
internal systems”.

The Decision on Appeal of March 25, 2010 in regards to claims 56-58 stated
that “[i]f not inherent in the Sandhu system, the use of a separate internal
system being associated with each product type would be an obvious
Appeal 2009-011598
Application 09/764,782

3
expedient to permit processing if one system failed” (Decision on Appeal,
9).
The Appellants have first argued that the limitations of claim 56 are
not inherent. “To establish inherency, the extrinsic evidence must make
clear that the missing descriptive matter is necessarily present in the thing
described in the reference, and that it would be so recognized by persons of
ordinary skill. Inherency, however, may not be established by probabilities
or possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.’” In re Robertson, 169 F.3d 743, 745,
(Fed. Cir. 1999) (citations omitted) (internal quotation marks omitted).
Here, Sandhu actually does show the claimed features of claim 56 in Fig. 1.
Sandhu’s Fig. 1 shows the CFOWebSystem and Back-End System (deal
management computers) connected to several provider systems such as
pricing 40, payments 50, trading 60, confirmation 70, and settlement 80
systems (with 40, 50, 60, 70, and 80 serving as internal systems) and
associated with one or more product types thus meeting the limitations of
claims 56-58. Note that the claims 56-58 only require “one or more product
types” and that only one product type would meet the cited claim limitation.
In regards to the Appellants second argument, even if Fig. 1 were to
not show the claimed features of claims 56-58 in some manner, such a
modification would have been obvious to permit processing if one system
failed or if systems were required at separate locations. “Section 103 forbids
issuance of a patent when ‘the differences between the subject matter sought
to be patented and the prior art are such that the subject matter as a whole
would have been obvious at the time the invention was made to a person
having ordinary skill in the art to which said subject matter pertains.’” KSR
Appeal 2009-011598
Application 09/764,782

4
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The Court in KSR also
stated that in a Section 103 analysis 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 at 418. Here one of
ordinary skill in the art would have seen the advantage of using separate
internal systems if desired for each product type to permit use of those
systems if one system failed or if systems were required at separate
locations. Such a modification would have been obvious and well within the
skill level of one of ordinary skill in the art and readily inferred at the time
the invention was made.
In light of the above, the Appellants Request does not persuade us that
we erred in affirming the rejections of claims 56-58 35 under U.S.C.
§ 103(a) as unpatentable over Sandhu and McErlean.

DECISION
Accordingly, the Appellants request for rehearing is denied.

DENIED

MP

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