Ex Parte Quraishi et al

Patent Trial and Appeal Board

Dec 12, 2012

09827333 (P.T.A.B. Dec. 12, 2012)

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.
09/827,333 04/06/2001 Syed K. Quraishi 62225-160 2977
7590 12/13/2012
MCDERMOTT, WILL & EMERY
600 13th Street, N.W.
Washington, DC 20005-3096
EXAMINER
CHENCINSKI, SIEGFRIED E
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
12/13/2012 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 SYED K. QURAISHI, MORGAN C. HAMM, JORGE ALFONSO,
and CLAIRE H. SANTANIELLO
____________

Appeal 2012-006949
Application 09/827,333
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-006949
Application 09/827,333

2
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 (2002) of
claims 6-13 and 29-40, which are all the claims pending in the application
and which have been rejected more than twice. We have jurisdiction under
35 U.S.C. § 6(b) (2002). Oral arguments were presented on November 15,
2012.

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to a rules based system
for order execution and asset movement processing (Spec. 1:15-17). Claim
6, reproduced below with the numbering in brackets added, is representative
of the subject matter on appeal.

6. A rules engine computer system, comprising:
a) an interface configured to receive a plurality of
transactions, each transaction containing a request either (1) for
an order to be sent to a market for execution or (2) for
execution of an asset
transfer from an account; and
b) a non-transitory storage medium having rules stored
thereon, the rules being configured to determine whether or not
to allow execution of a requested order or asset transfer, the
rules having
parameters configured to analyze the requested order or asset
transfer and a plurality of preset levels of scope of application,
wherein:
each rule has an assigned level of scope of application
selected from the plurality of preset levels,
Appeal 2012-006949
Application 09/827,333

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each preset level of scope of application specifies a scope
of source of transactions for which a corresponding rule should
apply to all transactions from any source within the specified
scope, and
the assigned level corresponding to each rule is
adjustable from a first one of the plurality of preset levels to a
second one of the plurality of preset levels based on a user
setting; and
c) an order/transaction processing section having access
to the storage medium, the order/transaction processing section
configured to apply at least one of the rules to each respective
received transaction based on source and level of the respective
received transaction being within the specified scope of each
applied rule, to determine whether or not to allow execution of
the requested
order or asset transfer contained in the respective received
transaction, wherein:
[1] upon determining to automatically approve execution
of the requested order or asset transfer contained in a first
received transaction, based on application of at least one of the
rules to the request for the order or asset transfer in the first
received transaction, the order/transaction processing section
forwards the order or the asset transfer in the request contained
in the first received transaction to an execution process for
fulfillment; [2] and
upon the application of at least one of the rules to a
second received transaction indicating a manual user approval
is required for execution of the order or asset transfer, in the
request contained in a second received transaction, the
order/transaction processing section forwards the request for the
order or asset transfer contained in the
second received transaction to a user for possible manual
approval for execution for fulfillment.

Appeal 2012-006949
Application 09/827,333

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Stein US 5,978,779 Nov. 2, 1999
Minton US 6,014,643 Jan. 11, 2000
Lutnick US 6,850,907 B2 Feb. 1, 2005

The following rejections are before us for review:
1. Claims 6 and 31 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Stein and Minton.
2. Claims 7-13 and 32-38 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Minton and Official Notice.
3. Claims 29-30 and 39-40 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Minton and Lutnick.

FINDINGS OF FACT
We find the findings of fact used in the Analysis section below are
supported at least by a preponderance of the evidence:1

ANALYSIS
The Appellants argue that the rejection of claim 6 is improper because
the cited prior art does not disclose claim limitation [1] (Br. 7-15). In
contrast, the Examiner has determined that the cited claim limitation is
disclosed by Stein at column 3, lines 50-58, column 4, line 16, and column
5, line 1 to column 6, line 15 (Ans. 11-12, 16-18).

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 2012-006949
Application 09/827,333

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We agree with Appellants. Claim limitation [1] requires:
[1] upon determining to automatically approve execution
of the requested order or asset transfer contained in a first
received transaction, based on application of at least one of the
rules to the request for the order or asset transfer in the first
received transaction, the order/transaction processing section
forwards the order or the asset transfer in the request contained
in the first received transaction to an execution process for
fulfillment . [(Claim 6, emphasis added).]

Thus, the claim requires that the order/transaction processing section upon
determining to automatically approve execution of the requested order or
asset transfer contained in a first received transaction based on rules then
forwarding the order or the asset transfer in the request for fulfillment in
some manner. The portions of Stein cited in the rejection of record do not
disclose this. Stein at column 3, lines 50-58 does disclose stock trading and,
at column 4, line 16 does disclose a transaction dealer but these portions do
not show the recited features of the claim limitation [1] which require
determining to automatically approve execution of an order based on
application of the rules and forwarding the order for fulfillment. Stein at
column 5, line 1 to column 6, line 15 discloses various features including the
aging of documents to check for authorization to transact a product and the
creation of a CCID (client/counterparty identification), however, these
citations do not include determining to approve a execution of the first
received transaction based on the rules or the subsequent forwarding for
fulfillment. As these cited portions of Stein fail to disclose claim limitation
[1], the rejection of record for claim 1 and its dependent claims is not
sustained. Claim 31 contains a similar limitation and the rejection of this
claim and its dependent claims is not sustained for these reasons as well.
Appeal 2012-006949
Application 09/827,333

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CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims as listed in “THE REJECTIONS” section above.

DECISION
The Examiner’s rejection of claims 6-13 and 29-40 is reversed.

REVERSED

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