Ex Parte Mah

Patent Trial and Appeal Board

Apr 29, 2016

10839355 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/839,355 0510612004
32172 7590
BLANK ROME LLP
1825 Eye Street NW
Washington, DC 20006
05/03/2016
FIRST NAMED INVENTOR
Leong Fai Mah
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.
E3331.0639 5768
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
#IPDocketing-DC@BlankRome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEONG F AI MAH
Appeal2014-000988
Application 10/839,355 1
Technology Center 3600
Before HUBERT C. LORIN, CYNTHIA L. MURPHY, and
BRUCE T. WIEDER, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Leong Pai Mah (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-18 and 23-41. We have jurisdiction under
35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellant identifies EBS Group Ltd. as the real party in interest.
Appeal Br. 2.
Appeal2014-000988
Application 10/839,355
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A trader terminal having a screen display for use by a trader trading
fungibles on an automated trading system, the trader terminal having a
computer-readable tangible medium storing instructions to cause the
screen display of the terminal to display:
an active trading grid, which includes: a plurality of price
panels for prices of fungibles tradable on the system, the plurality of
price panels being arranged as at least a first active page of price
panels, and a second active page having at least one price panel, each
price panel displaying live market data for a tradable instrument and
including bid and offer prices, each price panel enabling the trader to
submit bids and offers to the automated trading system in response to
the live bid and offer prices, the first and second active pages being
selectably displayable in a particular area of the screen display; and
a plurality of further panels for displaying other trade related
information,
wherein the computer-readable medium further stores
instructions to enable the trader to switch the display in the particular
area between at least the first active page and the second active page
without changing the display of the plurality of further panels.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Horsfall
Risberg
Shinn
2002/0143685 Al
us 5,339,392
us 5,806,050
Oct. 3, 2002
Aug. 16, 1994
Sep. 8, 1998
"Reuters Dealing 3000 Gains Momentum In Global Marketplace,"
Business Wire, May 24, 2001. [Reuters]
2
Appeal2014-000988
Application 10/839,355
The following rejections are before us for review:
1. Claims 1-18 and 26-41 are rejected under 35 U.S.C. §101 as being
directed to non-statutory subject matter.
2. Claims 1-4, 9-18, 23, 25-29, and 34-41 are rejected under 35 U.S.C.
§ 103 (a) as being unpatentable over Horsfall and Risberg.
3. Claims 5 and 30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Horsfall, Risberg, and Reuters.
4. Claims 6-8, 24, and 31-33 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Horsfall, Risberg, and Shinn.
ISSUES
Did the Examiner err in rejecting claims 1-18 and 26-41 under
35 U.S.C. §101 as being directed to non-statutory subject matter.
Did the Examiner err in rejecting claims 1-4, 9-18, 23, 25-29, and
34-41 under 35 U.S.C. § 103(a) as being unpatentable over Horsfall and
Risberg; claims 5 and 30 under 35 U.S.C. §103(a) as being unpatentable
over Horfall, Risberg, and Reuters; and, claims 6-8, 24, and 31-33 under
35 U.S.C. §103(a) as being unpatentable over Horsfall, Risberg, and Shinn?
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
3
Appeal2014-000988
Application 10/839,355
ANALYSIS
The rejection of claims 1-18 and 26-41under35 U.S.C. §101 as being
directed to non-statutory subject matter.
The Examiner takes the position that the claims "recite the use of a
'computer-readable tangible medium'" - which the Examiner considers to
cover transitory signals, and signals do not fall in any of the statutory
categories of invention - and on that basis finds the claims are not patent-
eligible under § 101.
"As in any other context in which the scope and meaning of the
claims bears on the ultimate determination at hand, we must start by
considering the issue of claim construction." In re Nuijten, 500 F. 3d 1346,
1352 (Fed. Cir. 2007). No claim construction analysis was performed here.
Nevertheless, a plain reading of the claims makes clear that they are directed
to a "trader terminal" and the terminal comprises two elements: (1) a "screen
display" and (2) a "computer-readable tangible medium". The claims are
not, as the Examiner appears to argue, directed to only a computer-readable
tangible medium.
To the extent the Examiner is taking the position that a limitation's
patent-eligibility determines the claim's patent eligibility, it has long been
held that patent-eligibility is determined based on the claim as a whole. Cf
In re Bilski, 545 F.3d 943, 958 (Fed. Cir. 2008) (en bane), cert. granted, 129
S. Ct. 2735 (2009), and aff d but criticized sub nom. Bilski v. Kappas, 130 S.
Ct. 3218 (2010).
the Court has made clear that it is inappropriate to determine the
patent-eligibility of a claim as a whole based on whether selected
limitations constitute patent-eligible subject matter. Flook, 437 U.S. at
594, 98 S.Ct. 2522 ("Our approach to respondent's application is,
4
Appeal2014-000988
Application 10/839,355
however, not at all inconsistent with the view that a patent claim must
be considered as a whole."); Diehr, 450 U.S. at 188, 101 S.Ct. 1048
("It is inappropriate to dissect the claims into old and new elements
and then to ignore the presence of the old elements in the analysis.").
After all, even though a fundamental principle itself is not patent-
eligible, processes incorporating a fundamental principle may be
patent-eligible. Thus, it is irrelevant that any individual step or
limitation of such processes by itself would be unpatentable under
§ 101. See In re Alappat, 33 F.3d 1526, 1543-44 (Fed.Cir.1994) (en
bane) (citing Diehr, 450 U.S. at 187, 101 S.Ct. 1048).
The rejection is not sustained.
The rejection of claims 1-4, 9-18, 23, 25-29, and 34-41under35 U.S.C.
§103(a) as being unpatentable over Horsfall and Risberg.
The Appellant argued claims 1-4, 9-18, 23, 25-29, and 34-41 as a
group (Appeal Br. 8). We select claim 1 as the representative claim for this
group, and the remaining claims 2-4, 9-18, 23, 25-29, and 34-41 stand or fall
with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2013).
The Examiner's argues, in part, that
[Horsfall] discloses a trader terminal having a screen display (see at
least 1 [ [0008]) for use by a trader trading fungibles on an automated
trading system (intended use language not of patentable weight, but
see 1 [[0002], [0037],and the figures), the trader terminal being
controlled by a processor and having computer- readable medium
storing instructions to cause the screen display of the terminal to
display (see at least 1 [ [0039]-[0040]): an active trading grid,
comprising a plurality of price panels for prices of fungibles tradable
on the system (see at least 1 [ [0048], Figure 3 currency pairs also
shown in deal stacks with FIX spot prices, Figures 4 through 9, 1 [
[0077], [0088],[0094]), the plurality of price panels being arranged as
at least a first active page or [of] price panels (see at least 1 [ [0048])
each price panel displaying live market data for a tradable instrument
and including bid and offer prices each price panel enabling the trader
to submit bids and offers to the automated trading system in response
5
Appeal2014-000988
Application 10/839,355
to the live bid and offer prices, (panel contain prices (bids or offers)
[iJ62] [iJ77-81] [iJ91] [iJ268-282] [iJ307-328] [iJ387] [iJ414-431] [iJ492-
506J), and a plurality of further panels for displaying other trade
related information (see at least 1 [ [0041 ], [0044 ]-[0049]).
Office Action of Sep. 12, 2012, pp. 3-4 (emphasis added).
The Appellant argues that "contrary to the Examiner's assertion,
[Horsfall] does not have price panels which enable traders to submit bids
and offers in an automated trading system, as required by each of the
independent claims of the current application." Appeal Br. 9.
The Appellant's argument is not persuasive as to error in the
Examiner's position.
First, the Appellant does not address the cited passages in Horsfall the
Examiner relied on as evidence in support of the finding that Horsfall
discloses the claim limitation "each price panel enabling the trader to submit
bids and offers to the automated trading system in response to the live bid
and offer prices." For example, the Appellant does not appear to dispute the
Examiner's finding that Horsfall, at para. 2, discloses an automated trading
system. Also, the Examiner pointed to passages in Horsfall that provide
extensive discussion of "panels", that includes discussion of a "Deal Detail
panel" with bid and offer prices (para. 77). The Appellant does not explain
why said disclosure is insufficient as evidence of disclosure of a "price
panel".
And, second, the Appellant is suggesting a too narrow construction of
the claim, and one that does not comport with its broadest reasonable
interpretation. For example, in making the argument, the Appellant points
out that "while these [Horsfall] panels can be added or subtracted, none of
these panels are price panels through which the trader can trade." Appeal
6
Appeal2014-000988
Application 10/839,355
Br. 9. Yet, the panels of claim 1 are not expressed in such limited terms.
They are not required to function in a manner for a trader to trade through
them. As reasonably broadly claimed, the price panels need only "enable
traders to submit bids and offers in an automated trading system." The scope
of enabling traders to submit bids and offers in an automated trading system
is much broader than what the Appellant suggests.
The Appellant argues that Horsfall is "a conversation/negotiation back
and forth between traders using [ ] interfaces . . . [but] fails to describe a
system with price panels which enable traders to submit bids and offers in an
automated trading system, as required by the independent claims." (App.
Br. 10.) But the Appellant does not explain how a conversation/negotiation
back and forth between traders using interfaces as Horsfall discloses fails to
describe a system with price panels which enable traders to submit bids and
offers in an automated trading system. The Horsfall system, which employs
a conversation/negotiation back and forth between traders involving trading
terminals as part of an automated trading system, that includes a panel with
bid and offer prices, would "enable traders to submit bids and offers in an
automated trading system" as claimed.
For the foregoing reasons, the argument that "[Horsfall] does not have
price panels which enable traders to submit bids and offers in an automated
trading system, as required by each of the independent claims of the current
application" (App. Br. 9) is not persuasive as to error in the rejection.
The remaining arguments are unpersuasive as to error in the rejection.
7
Appeal2014-000988
Application 10/839,355
The rejection of claims 5 and 30 under 35 U.S.C. §103(a) as being
unpatentable over Horsfall, Risberg, and Reuters.
The rejection of claims 6-8, 24, and 31-33 under 35 U.S.C. §103(a) as being
unpatentable over Horsfall, Risberg, and Shinn.
The Appellant challenges these rejection on the same grounds as those
used to challenge the rejection of claim 1. Accordingly, because we found
them unpersuasive as to that rejection, we find them equally unpersuasive as
to error in the rejection of claims 5-8, 24, and 30-33.
CONCLUSIONS
The rejection of claims 1-18 and 26-41under35 U.S.C. §101 as being
directed to non-statutory subject matter is reversed
The rejection of claims 1-4, 9-18, 23, 25-29, and 34-41 under
35 U.S.C. §103(a) as being unpatentable over Horsfall and Risberg; claims 5
and 30 under 35 U.S.C. §103(a) as being unpatentable over Horsfall,
Risberg, and Reuters; and, claims 6-8, 24, and 31-33 under 35 U.S.C.
§ 103(a) as being unpatentable over Horsfall, Risberg, and Shinn, are
affirmed.
DECISION
The decision of the Examiner to reject claims 1-18 and 23-41 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)(l )(iv).
8
Appeal2014-000988
Application 10/839,355
AFFIRMED
9