Ex Parte Schweickert et al

Board of Patent Appeals and Interferences

Jun 26, 2012

10928265 (B.P.A.I. Jun. 26, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte UWE SCHWEICKERT, MIROSLAV BUDIMIR, and PETER
GOMBER
____________

Appeal 2010-007629
Application 10/928,265
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007629
Application 10/928,265

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STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 1-5, 11, 13, 15-16, 26-29, 40, and 49-50 which are
all the claims pending in the application. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We AFFIRM-IN-PART.

THE INVENTION
The Appellants’ claimed invention is directed to a computer system
for processing orders in a security trading system (Spec. [0001]). Claim 1,
reproduced below, is representative of the subject matter on appeal.

1. A computer system operable in a security trading system,
the computer system being arranged for processing orders and
comprising:
means for receiving a sell order comprising a lower limit, a
conditional lower limit and a threshold volume, wherein the lower
limit and the conditional lower limit define a conditional
selling price range in which the sell order can be executed under
certain selling conditions; and wherein the threshold volume specifies
a minimum threshold size for execution of the sell order;
means for receiving a buy order comprising an upper limit, a
visible buy volume parameter and a hidden buy volume parameter;
means for determining whether said certain selling conditions are
fulfilled; and
means for executing the sell order and the buy order against
each other if at least said certain selling conditions are fulfilled;
wherein the visible buy volume parameter is specifying a first part of
the volume of the buy order intended to be disclosed to all the
customers of the security trading system;
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Application 10/928,265

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wherein the hidden buy volume parameter is specifying a
second part of the volume of the buy order intended not to be
disclosed to all the customers of the security trading system; and
wherein the means for determining whether said certain selling
conditions are fulfilled comprises means for determining whether the
sum of said first part and said second part of the volume of the buy
order is superior or equal to said threshold volume.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:

Korhammer US 2004/0143538 A1 Jul. 22, 2004
Gill US 2007/0226118 A1 Sep. 27, 2007

The following rejections are before us for review:
1. Claims 3-5, 11, 13, 15, 27-29, and 50 are rejected under 35
U.S.C. § 112, second paragraph.
2. Claims 1-3, 11, 13, 15-16, 26-29, 40, and 49 are rejected under
35 U.S.C. § 102(e) as being anticipated by Korhammer.
3. Claims 4-5, 15, and 28-29 are rejected under 35 U.S.C. § 103(a)
as unpatentable under Korhammer and Gill.

Appeal 2010-007629
Application 10/928,265

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FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:1
FF1. Korhammer at [0051], and [0058]-[0060] does not disclose that for
the trade to execute that a threshold volume specifies a minimum threshold
size for execution of the sell order.

ANALYSIS
Rejections under 35 U.S.C. § 112, second paragraph
The Appellants state that a proposed amendment was filed with the
Appeal Brief to address the rejection under 35 U.S.C. § 112, second
paragraph (Br. 2). The Examiners Answer gives no indication that the
amendment was entered. The rejection made under 35 U.S.C. § 112, second
paragraph, remains presented in the Answer (Ans. 3) and has not been
addressed in the Reply Brief. This rejection of record is therefore sustained
as no arguments in this regard have been presented addressing the merits of
this rejection.

Rejections under 35 U.S.C. § 102(e)
The Appellants argue that the rejection of claim 1 is improper because
the cited prior art fails to disclose “wherein the threshold volume specifies a
minimum threshold size for execution of the sell order” (Br. 6-7, Reply Br.
2).

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).
Appeal 2010-007629
Application 10/928,265

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In contrast, the Examiner has determined that Korhammer discloses
the cited claim limitation at [0051] at lines 1-8, and [0058]-[0060] (Ans. 4,
11).
We agree with the Appellants. Claim 1 recites “wherein the threshold
volume specifies a minimum threshold size for execution of the sell order”
and this not shown at the portions of the Korhammer reference cited by the
Examiner (FF1). Korhammer at [0051] makes no mention of any threshold
volume. Korhammer at [0058]-[0060] does disclose the use of using a
“sweep order” but there is no specific disclosure in these cited portions of
the cited threshold volume as claimed. For these reasons the rejection of
claim 1 and its dependent claims is not sustained. Claim 2 contains a similar
claim limitation and the rejection of this claim and its dependent claims is
not sustained for these same reasons.

CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims cited in the rejection under 35 U.S.C. § 112, second
paragraph.
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims cited in the rejection under 35 U.S.C. § 102(e) and 35
U.S.C. § 103(a).

DECISION
The Examiner’s rejection of claims 1-2, 16, 26, 40, and 49 is reversed.
The Examiner’s rejection of claims 3-5, 11, 13, 15, 27-29, and 50 is
sustained.
Appeal 2010-007629
Application 10/928,265

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AFFIRMED-IN-PART

MP