Ex Parte 8793181 et al

Patent Trial and Appeal BoardOct 18, 2017

90013558 (P.T.A.B. Oct. 18, 2017)

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. 90/013,558 08/04/2015 8793181 034686.003 6742 13992 7590 10/18/2017 Polsinelli PC Special Reexam Group 1000 Louisiana Street, Fifty-Third Floor Houston, TX 77002 EXAMINER REICHLE, KARIN M ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 10/18/2017 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte TRADING TECHNOLOGIES INTERNATIONAL, INC., Patent Owner and Appellant ____________ Appeal 2017-007196 Reexamination Control 90/013,558 Patent 8,793,181 B2 Technology Center 3900 ____________ Before JOHN A. JEFFERY, MARC S. HOFF, and STEPHEN C. SIU, Administrative Patent Judges. SIU, Administrative Patent Judge DECISION ON APPEAL This proceeding arose out of a request for ex parte reexamination of U.S. Patent No. 8,793,181 B2 (“the ’181 patent”) to Michael J. Burns, titled Method, Apparatus and Interface for Trading Multiple Tradeable Objects, issued July 29, 2014. An oral hearing was conducted on September 7, 2017. Patent Owner appeals under 35 U.S.C. § 134 and 306 from the Examiner’s rejection of claims 1–72. App. Br. 7.1 We have jurisdiction under 35 U.S.C. § 6(b). 1 Appeal Brief, filed November 22, 2016 (“App. Br.”). Appeal 2017-007196 Reexamination Control 90/013,558 Patent 8,793,181 B2 2 The disclosed invention relates generally to electronic trading. See Spec 1:53–54. Claim 1 reads as follows: 1. A non-transitory computer readable medium having instructions stored thereon, which when executed cause a processor to execute acts comprising: receiving a user-selection of an order entry location corresponding to at least one axially aligned price level of a plurality of displayed axially aligned price levels, where each level of the plurality of displayed axially aligned price levels represents a combined value to trade a first tradeable object and a second tradeable object, where an underlying product of the second tradeable object is different from an underlying product of the first tradeable object, and where each combined value of the plurality of displayed axially aligned price levels is derived from at least both market data for the first tradeable object and market data for the second tradeable object; and initiating submission of a trade order for any of the first tradeable object and the second tradeable object in response to receiving the user-selection of the order entry location, and where an order quantity of the trade order is allocated between the first tradeable object and the second tradeable object according to a quantity allocation rule. Patent Owner appeals the Examiner’s rejection of claims 1–72 under 35 U.S.C. § 103(a) as unpatentable over WO 01/161852 A2, Mar. 8, 2001 (“Friesen”) and Courtney Smith, Futures Spread Trading: The Complete Guide (2000) (“FST”). App. Br. 7. Appeal 2017-007196 Reexamination Control 90/013,558 Patent 8,793,181 B2 3 ISSUE Did the Examiner err in rejecting claims 1–72? ANALYSIS “Allocate” – claim construction Patent Owner relies on expert testimony (i.e., Christopher H. Thomas) and a definition obtained from a dictionary (i.e., Webster’s Third new International Dictionary (1986)) to argue that one of skill in the art would have broadly but reasonably understood the claim term “allocate” according to “its plain and ordinary meaning in view of the specification” to mean “to distribute, to divide, [or] to apportion.” App. Br. 16. The Examiner “disagrees with [Patent Owner’s] . . . assertions” (Final Act. 10), but does not provide an alternative broadest reasonable interpretation of the term “allocate.” For example, the Examiner states that “[t]he claim language requires ‘where an order quantity of the trade order is allocated between the first tradeable object and the second tradeable object according to a quantity allocation rule’” and “does not require allocation based on routing parameters.” Final Act. 11; see also Final Act. 12–15. While not entirely clear, the Examiner appears to concur with Patent Owner that one of skill in the art would have understood the term “allocate” to include “to distribute, to divide, or to apportion,” but that one of skill in the art would have understood further that the term “allocate” must be based on a quantity Appeal 2017-007196 Reexamination Control 90/013,558 Patent 8,793,181 B2 4 allocation rule and would not have been necessarily based on routing parameters. We note that Patent Owner’s proposed construction of the term “allocate” neither precludes the use of a “quantity allocation rule” nor requires reliance on “routing parameters.” In view of the Examiner not having identified any specific flaws in Patent Owner’s proposed construction of the term “allocate” as well as the Examiner’s failure to provide an alternative broadest reasonable interpretation of the term “allocate” as would have been understood by one of skill in the art in light of the Specification, we credit Patent Owner’s expert’s testimony and Patent Owner’s proffered evidence (e.g., dictionary definition) and adopt Patent Owner’s proposed broadest, reasonable construction of the term “allocate” (i.e., “to distribute, to divide, [or] to apportion”). Obviousness Patent Owner argues that Friesen and FST both fail to disclose or suggest an order quantity “allocated” (i.e., distributed, divided or apportioned) between a first tradeable object and a second tradeable object according to a quantity allocation rule. App. Br. 16–17, 25, 26, 30–34, 38– 42 (citing Thomas Decl. ¶¶ 50, 51, 58). The Examiner finds that FST discloses “ratio of contracts of commodity and/or its product(s), buying one contract of soybean futures and selling one contract of each of oil and meal, buying 10 soybean contracts Appeal 2017-007196 Reexamination Control 90/013,558 Patent 8,793,181 B2 5 and selling 11 contracts of soybean meal and 9 contracts of soybean oil” and equates any of these disclosures of FST with submission of a trade order with an order quantity of the trade order being allocated (i.e., distributed, divided or apportioned), between the first tradeable object and the second tradeable object according to a quantity allocation rule, as recited in claim 1. Final Act. 58. As the Examiner states, FST discloses examples of “soybean crusher transactions” in which a user buys “one contract of soybean futures” and sells “one contract each of soybean oil and soybean meal” or the user may buy “10 soybean contracts while selling 11 contracts of soybean meal and 9 contracts of soybean oil.” FST 217. We agree with the Examiner that FST discloses examples in which a user submits a trade order (e.g., buying one contract of soybean futures, selling one contract of soybean oil, or selling one contract of soybean meal, for example). We also agree with the Examiner that one of skill in the art would have understood that any of the examples of trade orders submitted by the user may be executed. However, the Examiner does not explain sufficiently how a user placing any of these sample orders, presumed to be subsequently executed, would suggest that the quantity of any of these placed orders would also be allocated (i.e., distributed, divided, or apportioned) between a first tradeable object and a second tradeable object according to a quantity allocation rule. For example, one of skill in the art would have understood that an order placed for buying one contract of soybean futures (as disclosed by FST) would have been Appeal 2017-007196 Reexamination Control 90/013,558 Patent 8,793,181 B2 6 executed such that the user would have bought one contract of soybean futures (as requested) rather than allocating (i.e., distributing, dividing, or apportioning) the order between a first tradeable object and a second tradeable object according to a quantity allocation rule, such allocating not having been requested or contemplated by the user in the first place. Claims 13, 25, 37, 49, and 61 recite a similar feature. The Examiner erred in rejecting claims 13, 25, 37, 49, and 61 and claims dependent therefrom. SUMMARY We reverse the Examiner’s rejection of claims 1–72. REVERSED Appeal 2017-007196 Reexamination Control 90/013,558 Patent 8,793,181 B2 7 Patent Owner: POLSINELLI PC SPECIAL REEXAM GROUP 1000 LOUISIANA STREET, FIFTY-THIRD FLOOR HOUSTON, TX 77002 Third Party Requester: SMITH, GAMBRELL & RUSSELL 1055 THOMAS JEFFERSON STREET, NW SUITE 400 WASHINGTON, DC 20007