Ex Parte Naas et al

Board of Patent Appeals and Interferences

Jan 19, 2012

10828497 (B.P.A.I. Jan. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARCEL NAAS and GERD HARTUNG
____________

Appeal 2010-011473
Application 10/828,497
Technology Center 3600
____________

Before: HUBERT C. LORIN, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011473
Application 10/828,497

2
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1, 3-6, 8-11, 13-17,
19-22, 24-27, and 29-32. We have jurisdiction to review the case under 35
U.S.C. §§ 134 and 6 (2002).
The claimed invention is directed to systems and methods for
controlling transfers of a group of resources which are defined in association
with a condition under which, after the resource group transfer has been
completed, a reverse transfer of the same or a similar group of resources has
to occur (Spec. 1:7-11). Claim 1, reproduced below, is further illustrative of
the claimed subject matter.
1. A repo basket transaction system comprising:
a trading system connected to receive repo quotes from
market participants, the repo quotes specifying a repo basket
transaction and including a security basket definition indicating
at least one class of securities defining a synthetic security, said
security basket definition not indicating specific securities;
a clearing system connected to said trading system and
wherein said clearing system is configured to generate
settlement instructions relating to repo basket transactions that
correspond to the security basket definition, the settlement
instructions being based on a negotiation of a repo transaction
resulting from the repo quotes;
a settlement system connected to said clearing system to
receive settlement instructions relating to repo basket
transactions, wherein said settlement system comprises a
securities pooling and allocation unit adapted to allocate at least
one specific security that meets the security basket definition,
said settlement system also completing the repo transaction by
posting the allocated specific securities on sub-ledger securities
and cash accounts.

Claims 1, 3-6, 8-11, 13-17, 19-22, 24-27, and 29-32 stand rejected
under 35 U.S.C. § 103(a) as unpatentable over five Eurex references, as
Appeal 2010-011473
Application 10/828,497

3
evidenced by The Benchmark in Electronic Repo Trading (hereinafter “Ref.
U”), About Eurex, Corporate Profile (hereinafter “Ref. V”), Eurex Launches
Swiss Equity-Repo Trading, 2-9 (2000) (hereinafter “Ref. W”), Eurex
Clearing AG, Extension of Services (hereinafter “Ref. X”), and Eurex
Handbook, Life of a Repo Trade, 2-22 (2002) (hereinafter “Ref. Y”) in view
of Brian Bollen, Tri-Party Repo Back in the Spotlight, International
Securities |Finance. London: 1st Quarter 2001, 1-5 (2001) (hereinafter
“Bollen”)1.
We AFFIRM.

ISSUE
Did the Examiner err in asserting that a combination of the Refs. U-Y
and Bollen renders obvious independent claim 12?

FINDINGS OF FACT
We adopt the Examiner’s findings of fact, as set forth on pages 4-13
of the Examiner Answer.

ANALYSIS
We are not persuaded the Examiner erred in asserting that a
combination of Refs. U-Y and Bollen renders obvious independent claim 1
(App. Br. 7-12). The Examiner asserts that Refs. U-Y render obvious every

1 The Examiner withdrew the rejection of claims 17, 19-22, 24-27, and 29-
31 under 35 U.S.C. § 101 (Exam’r’s Ans. 3).
2 As Appellants set forth the same arguments for independent claims 1, 16,
17, and 32, we choose independent claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(vii).
Appeal 2010-011473
Application 10/828,497

4
aspect of independent claim 1 except for “a security basket definition
indicating at least one class of securities defining a synthetic security, said
security basket definition not indicating specific securities.” For that, the
Examiner cites pp. 2-3 of Bollen (Exam’r’s Ans. 4-5, 10-12). In other
words, the Examiner asserts that Refs. U-Y disclose every transaction set
forth in independent claim 1, but has substituted the “synthetic security” of
Bollen for the instruments transacted in Refs. U-Y.
Appellants assert that Bollen’s “synthetic security” does not cure the
deficiencies of Refs. U-Y, because the transaction instituted in Bollen
concerning their “synthetic security” differ from the transactions recited in
independent claim 1 (App. Br. 9-12). For example, Appellants assert that
“nowhere does Bollen even hint at generating settlement instructions that
correspond to a security basket definition, the security basket definition
indicating at least one class of securities defining a synthetic security, the
security basket not indicating specific securities” (App. Br. 10). However,
Refs. U-Y, and not Bollen, are cited for disclosing “generating settlement
instructions that correspond to a security basket definition.” Bollen is only
cited for disclosing a security basket definition different from those
disclosed in Refs. U-Y, and not the “generating [of] settlement instructions.”
To that end, Appellants are impermissibly arguing Bollen individually with
respect to the generating aspect, when the rejection of the generating aspect
is over a combination of Refs. U-Y and Bollen. See In re Merck & Co. Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (the argument that a single reference
alone does not disclose the recited claimed steps is not persuasive because
nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
Appeal 2010-011473
Application 10/828,497

5
disclosures); In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references”).
For dependent claims 3-6, 8-11, 13-15, 19-22, 24-27, and 29-31,
Appellants generally assert that a combination of Refs. U-Y and Bollen does
not render obvious the respective independent claim, and then repeat the
subject matter of the dependent claim without any further analysis (App. Br.
14-18). Accordingly, as the Examiner has set forth a prima facie case of
obviousness with respect to these dependent claims, and Appellants have not
substantively rebutted the rejections, they are sustained. See Keller, 642
F.2d at 425 (“[o]nce a prima facie case of obviousness [is] established..., the
burden shift[s] to appellant to rebut it”).

DECISION
The decision of the Examiner to reject claims 1, 3-6, 8-11, 13-17, 19-
22, 24-27, and 29-32 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Appeal 2010-011473
Application 10/828,497

6
hh