`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`RC. 80: 1-150
`Alexandril Virginia 33313-1450
`www.uspm.gov
`
`90I0| 1.250
`
`o9r22r20m
`
`6712|32
`
`049506I296I9|
`
`3531‘I
`
`FIRST NAMED INVEN‘I‘OR
`
`MTORNEY DOCKET NO.
`
`CONFIRMATION N0.
`
`MBHBI’I‘RADING TECHNOLOGIES
`300 SOUTH WACKER DRIVE
`SUITE 3200
`CHICAGO. IL 60606
`
`-
`
`_—
`ART UNIT
`
`DATE MAILED: 12fl4f2010
`
`Please find below andfor attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. Iowa)
`
`TDA 1013
`TDA 1013
`CBM of U.S. Patent No. 7,676,411
`CBM of US. Patent No. 7,676,411
`
`
`
`Lu an“
`
`A " 2% UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Commissionerfor Patents
`United States Patent and Trademark Office
`PD. BOX‘MSU
`Alexandria, VA 2231 3-1 450
`mauvmptagw
`
`DO NOT USE IN PALM PRINTER
`
`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
`
`Walter Scott
`Alston 8. Bird LLP
`
`101 South Tryon Street Suite 4000
`Chaflotte. NC 28280-4000
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`
`REEXAMINATION CONTROL NO. 90/011 250.
`
`PATENT NO. 6772132.
`
`ART UNIT 3992.
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (3? CFR 1.550(0).
`
`' Where this copy is supplied after the repiy by requester. 37 CFR 1.535, or the time for filing a
`reply has passed, no submission on behalf of the ex parte reexamination requester will be
`acknowledged or considered (37 CFR 1.550(9)).
`
`PTOL-465 (Rev.07—04)
`
`
`
`.
`.
`Order Granting / Denymg Request For
`Ex Parte Reexamination
`
`90011250
`_
`Exam'm”
`Sam Rimell
`
`.
`
`67721 2
`3
`A” ”n"
`3992
`
`Patent Under Reexamination
`
`--The MAiLING DA TE of this communication appears on the cover sheet with the correspondence address--
`
`The request for ex parte reexamination filed 22 Segtember 2010 has been considered and a determination
`has been made. An identification of the claims, the references reiied upon. and the rationale supporting the
`determination are attached.
`
`Attachments: a)[:| PTO-892,
`
`0M PTO/SBIOB,
`
`c). Other: Decision
`
`1. I] The request for ex parte reexamination is GRANTED.
`
`RESPONSE TIMES ARE SET AS FOLLOWS:
`
`
`
`For Patent Owner's Statement (Optional): TWO MONTHS from the mailing date of this communication
`(37 CFR 1.530 (b)). EXTENSIONS OF TIME ARE GOVERNED BY 37 CFR 1.550(0).
`
`For Requester's Reply (optional): TWO MONTHS from the date of service of any timely filed
`Patent Owner's Statement (37 CFR 1.535). N0 EXTENSION OF THIS TIME PERIOD IS PERMITTED.
`If Patent Owner does not file a timely statement under 3? CFR 1.530(b), then no reply by requester
`is permitted.
`
`2. IE The request for ex parte reexamination is DENIED.
`
`This decision is not appealable (35 U.S.C. 303(0)). Requester may seek review by petition to the
`Commissioner under 37 CFR 1.181 within ONE MONTH from the mailing date of this communication (37
`CFR 1. 515(0)). EXTENSION OF TIME TO FILE SUCH A PETITION UNDER 37 CFR1. 181 ARE
`AVAILABLE ONLY BY PETITION TO SUSPEND OR WAIVE THE REGULATIONS UNDER
`37 CFR1. 183.
`
`In due course, a refund under 3? CFR 1.26 ( c ) will be made to requester:
`
`a) 1:! by Treasury check or,
`
`b) IX} by credit to Deposit Account No. 160605, or
`
`c) |:I by credit to a credit card account, unless otherwise notified (35 U.S.C. 303(0)):
`
`iSam Rimelli
`
`Primary Examiner, Art Unit 3992
`1.1.3. Patenl and Trademark Office
`PTOL-4?1 (Rev. 08-05)
`
`.
`
`Office Action in Ex Parte Reexamination
`
`Part of Paper No. 20101116
`
`
`
`ApplicationfContr-‘ol Number: 907011250
`
`Art Unit: 3992
`
`Page 2
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`DECISION ON RE! QUEST FOR EX PAR TE REEXAMINATION
`
`A request for reexamination affecting claims 1—2, 8, 1.4, 20, 22-23, 25, 27-28, 30, 32-33,
`
`37-38, 40, 42-43, 47-48 and 53 of US Patent 6,772,132 has been received and considered. No
`
`substantial new questions of patentability have been raised by the request. Detailed rationale for
`
`this finding is set forth in this action.
`
`References Asserted by Reguester as Raising
`Substantial New uestions of Patentabili
`
`I U.S. Pre-Grant Publication 200370097325 to Friesen et a1, published May 22, 2003 and
`
`filed April 9, 1999.
`
`I U.S. Patent 5,297,031 to Gutterman et a1, published March 22, 1994 and filed March 6,
`
`1990.
`
`o U.S. Patent 7,212,999 to Friesen et a1, published May 1, 2007 and filed April 9, 1999.
`
`I
`
`o LIFFE. The Application Program Interface (API)
`
`reference manual
`
`for LIFFE
`
`CONNECT, September 1998, Release 3.1, published by LIFFE, London England (hereafter
`
`referred to as LIFFE CONNECT).
`
`a Swiss Exchange SWX, Swiss Exchange SWX TS User Manual, Versiou 2.1, December
`
`31, 1998, published by Swiss Exchange SWX (hereafter referred to as SWX Manual).
`
`Availability of Asserted References as Prior Art
`
`The references to w and SWX Manual were published prior to March 2, 2000
`
`effective filing date of U.S. Patent 6,772,132. Accordingly, these references are available as prior
`
`art under 35 USC 102(a).
`
`
`
`Application/Control Number: 90:01 1,250
`
`Page 3
`
`Art Unit: 3992
`
`The reference to Gutterman et al was published more than one year prior to the March 2,
`
`2000 effective filing date of U.S. Patent 6,272,132 and thus is available as prior art under 35
`
`USC 102(b).
`
`The references to Friesen et al (‘325) and Friesen let al ('999) were filed prior to the
`
`March 2, 2000 effective filing date of U.S. Patent 6,772,132 and thus are available as prior art
`1
`
`under 35 USC 102(e).
`
`Summagj of Prosecution History for U.S. Patent 6,772,132
`
`0 U.S. application 09t590,692 was filed June 9, 2000.
`
`o A non-final office action was mailed by USPTO on June 8, 2001. Claims 1-21- were
`
`withdrawn. Claims 22-40 were rejected under 35 USC 112, second paragraph. Claims 22-40
`
`were rejected under 35 USC 102(e)i103(a) in View ofwww.tradingtechnologiescom.
`0 Applicant submitted a response with remarks on October 9, 2001. Claims 1-21 were
`
`cancelled. Claims 22, 23, 30 and 36 were amended. Claims 41-88 were added.
`
`0 A Notice of Allowance was issued by USPTO on July 13,2002. Claims ”ll-83 were
`
`indicated as cancelled. Claims 22-70 were indicated as allowed. The attached correspondence
`
`includes an initialed form PTO 1449 signed January 9, 2002. Reasons for patentability stated:
`
`“The prior art fails to teach a method of placing a trade order, computer readable
`
`medium with instructions for placing a trade order, and/or a client system for placing a trade
`
`order comprising a dynamic display and a static display. The static display, direcled to the
`
`commodity price, does not change. In contrast, the values of the bid/ask, reflecting the market
`
`depth for the commodity, are dynamically displayed and are aligned with the corresponding
`
`
`
`ApplicationlControl Number: 90i011,250
`
`Page 4
`
`Art Unit: 3992
`
`static price values. Thesesfieatures in combination with the claimfeatures ofclaims 22,29 and/or
`
`35 render the claims allowable.
`
`PCT WOW/23099 is representative ofthe closest Foreign Patent prior art. The closet US
`
`Patent prior art and Non Patent Literature prior art are ofrecor .”
`
`0 Applicant submitted an information disclosure statement, petition for withdrawal from
`
`issue and Request for Continued Examination (RCE) on November 12, 2002.
`
`O USPTO mailed a Decision Granting Petition on November 13, 2002.
`
`0 Applicant submitted a response with remarks on March 21, 2003. Claims 22, 23, 29,
`
`30, 35, 36 and 37-40 were amended. Claims 89-95 were added.
`
`0 USPTO mailed a Notice of Allowance on February 10, 2004. Claims 22—70 and 89-95
`
`were indicated as allowed. A summary of the reasons for allowance are as follows:
`
`“The primary reason for allowance is the limitation directed to the ”dynamic display” of
`
`a plurality of the quantity of bids and asks aligned with a "static display ” of corresponding
`prices. Here, unlike the prior art, the ”stdtic” display ofprices is just that, static, and does not
`
`move in response to a change in the inside market. With this display of market depth, claimed in
`
`' each ofthe independent claims, a trader places a trade order with the pointer in the area of the
`
`order entry region of the dynamic market depth region, through a single computer implemented
`
`action, see Figures 3 and 4. For example, in figure 3, a click on Bid Q l8 will send an order to
`
`the market to sell i7 lots ofthe commodity at a price of89.
`
`
`
`ApplicationlControl Number: 90l011,250
`
`Page 5
`
`Art Unit: 3992
`
`The closest prior art including US Patent 6, 408, 282, PCT W0 (ll/16852 and commonly
`
`owned non-patent literature ”X Trader” (see. applicant's response to USPTO’S request for
`
`information) all lack this feature.”
`
`Reexamination Proceeding 00i008,576:
`
`o A request for reexamination of US Patent 6,770,132 was filed May 25, 2007.
`
`0 An order for reexamination of claims 1-56 of US Patent 6,??2,l32 was mailed by the
`
`USPTO on August 1, 2007.
`
`I A Notice of Intent to Issue Reexamination Certificate (NIRC) was mailed by USPTO
`
`on January 16, 2008. The action included a statement that reads as follows:-
`
`“The following is an examiner's statement of reasons for patentability and/or
`
`confirmation of the claims found patentable’ in this reexamination proceeding: The prior art of
`
`record fails to .teach a method, computer readable medium, or a system having a dynamic
`
`display of bids and asks in a commodity market aligned with a static display of prices
`
`corresponding thereto, wherein the static display of prices does not move in response to a
`
`change in the inside market in combination with the other claim limitations in independent
`
`claims 2', 8 and l4. Dependent claims 2-7, 9-13, and 15-56 are found patentable for the same
`
`reason.
`
`Although TSE (Orientation) A, TSE (Operation) 3, Amazon, and Friesen raised a
`
`substantial new question ofpatentability as set forth in the order granting reexamination dated
`
`August 1, 2007, these references do not anticipate the above-mentioned claim limitations and do
`
`
`
`Application/Control Number: 90/011,250
`
`Art Unit: 3992
`
`Page 6
`
`not render the claims obvious. TSE (Orientation) A and TSE (Operation) B clearly teach that the
`
`display ofprices is automatically updated every three seconds so as to keep the ”center price” in
`
`the middle ofthe screen. This teaching is directly counter to the static display of US. Patent No.
`
`6, 772,132, which uses the static display ofprices so that the user does not accidentally place an
`
`order at the unintended price (see column 2 lines 56-63). The requester relies on the one
`
`statement in TSE (Operation) B on page 640, which states that in the scroll screen the price
`
`display locations do not change automatically, for the teaching of a ”static” display ofprices.
`
`This teaching does not meet the claim limitations, as it is only a teaching that the automatically
`
`centering of the “center price" does not occur when the user is in the scroll mode. If it did, the
`
`user would not be able to scroll to the desired price, because the scrolling would result in the
`
`"center price” not 'being in the center ofthe screen. Amazon and Friesen also do not teach such
`
`claim limitations nor render the claims obvious”.
`
`I A Reexamination Certificate was issued by USPTO on March 31, 2009. The certificate
`
`States: “The patentabiliiy ofclaims 1—56 is confirmed'.
`
`Analysis of Asserted New Questions of Patentabiligg
`
`Preliminary Notes:
`
`(1) Friesen et al (‘325) is alternatively referred to in the request as “the ‘550 application”
`
`since it is a laid open publication of US utility application 09089550 (see request at page 17,
`
`third paragraph). For purposes of clarity'and consistency,
`
`it will be referred to hereafter as
`
`Friesen et a] (‘325), since the ('325) document is what is cited in the information disclosure. The
`
`application 09t289,550 also does not have any of the paragraph numbers referenced in the
`
`request.
`
`
`
`ApplicationlControl Number: 90/01 1,250
`Art Unit: 3992
`
`-
`
`Page 7
`
`(2) For each proposed new question, requester alternates between references to Friesen et
`
`a_l C325) and Friesen et al C999). Since Friesen et al C999) is simply the patent which matured
`from the application of Friesen et a1 C325), the two references are inter—related. Accordingly,
`
`both references will be addressed when the teachings of Friesen et al are raised as an issue.
`
`Issue #1: Requester asserts a substantial new question of patentability involving claims
`
`1-2, 8, 14, 20, 22-23, 25, 22-28, 30, 32-33, 37-38, 40, 42-43, 47-48 and 53 in view of Friesen et
`
`al_C325) 0r Friesen et al C999).
`
`MPEP 2216 states:
`
`“It
`
`is not sufficient that a request for reexamination merely proposes one or more
`
`rejections of a patent claim or claims as a basisfor reexamination. It must first be demonstrated
`
`that a patent or printed publication that is relied upon in a proposed rejection presents a new,
`non-cumulative technological teaching that was not previously considered and discussed on the
`
`record during the prosecution of the application that resulted in the patent for which
`
`reexamination is requested, and during the prosecution of any other prior proceeding involving
`
`the patentfor which reexamination is requested’.
`
`The reference to Friesen et a1 C325) was cited in the record of reexamination 90l008,576.
`
`It was listed as one of the cited references of the proceeding on the reexamination certificate
`
`published March 31, 2009. Additionally, Friesen et a1 C325) was commented on and considered
`
`by the Examiner in the “reasons for patentability” attached to the NIRC action of June 16, 2008.
`
`Accordingly, the re-appearance of Friesen et a1 C325) in this proceeding provides no new
`
`technological teachings. Its content was considered during the prior reexamination proceeding
`
`0
`
`
`
`Application/Control Number: 90/011,250
`
`_
`
`Page 8
`
`Art Unit: 3992
`
`90/008,576 and is merely cumulative to the identical citation of this reference in the prior
`
`reexamination proceeding.
`
`The reference to Friesen et a1 C999) is the United States Patent which matured from the
`
`laid open application published as Friesen et a1 C325). The content and technological teachings
`of Friesen et al ('999) correspond with the content and technological teachings of Friesen et a1
`
`C325). Requester does not assert any distinction between these references, nor is any distinction
`
`found. Although Friesen et al (‘999) was not previously cited, Friesen et al (‘999) presents no I
`
`new technological teachings in comparison to Friesen et a1 C325). The technological teachings
`
`considered by the examiner for Friesen et 31 C325) correSpond to those teachings of Friesen et al
`
`('999), and thus the teachings are previously considered.
`
`Accordingly, Friesen et al (‘325) and Friesen et al' ('999) do not raise a substantial new
`
`question of patentability for any of the claims 1-2, 8, 14, 20, 22-23, 25, 27-28, 30, 32-33, 37-38,
`
`40, 42-43, 47-48 and 53 of US Patent 6,772,132.
`
`Issue #2: Requester asserts a substantial new question of patentability involving claim 1
`
`as being obvious in view of Friesen et al C325) or Friesen et a1 C999).
`
`MPEP 2216 states:
`
`“It
`
`is not sufiicient that a request for reexamination merely proposes one or more
`
`rejections ofa patent claim or claims as a basis for reexamination. It mustfirst be demonstrated
`
`that a patent or printed publication that is reiied upon in a proposed rejection presents a new,
`
`non-cumulative technological teaching that was not previously-considered and discussed on the
`
`record during the prosecution of the application that resulted in the patent for which
`
`
`
`Application/Control Number: 90/011,250
`Art Unit: 3992
`
`.
`
`Page 9
`
`reexamination is requested, and during the prosecution ofany other prior proceeding invoiving
`
`the patem‘for which reexamination is requested”.
`
`The reference to Friesen et al C325) was cited in the record of reexamination 90/008,576.
`
`It was listed as one of the cited references of the proceeding on the reexamination certificate
`
`published March 31, 2009. Additionally, Friesen et al C325) was cammented on and considered
`
`by the Examiner in the “reasons for patentability” attached to the NIRC action ofJune 16, 2008.
`
`Accordingly,
`
`the re-appearance of Friesen et a1 C325) in this proceeding provides no new
`
`technological teachings. Its content was considered during the prior reexamination proceeding
`
`90i008,576 and is merely cumulative to the identical citation of this reference in the prior
`
`reexamination proceeding.
`
`The reference to Friesen et al ('999) is the United States Patent which matured from the
`
`laid open application published as Friesen et al C325). The content and technological teachings
`
`of Friesen et al C999) correspond with the content and technological teachings of Friesen et al
`
`(‘325)."Requester does not assert any distinction between these references, nor is any distinction
`
`found. Although Friesen et al ('999) was not previously cited, Friesen et al ('999) presents no
`
`new technological teachings in comparison to Friesen et a1 C325). The technological teachings
`
`considered by the examiner for Friesen et al C325) correspond to those teachings of Friesen et al
`(‘999), and thus the teachings are previously considered.
`
`Accordingly, Friesen et al C325) and Friesen et al ('999) do not raise a substantial new
`
`question of patentability for claim 1 of US Patent 6,272,132.
`
`
`
`
`
`
`
`ApplicationtControl Number: 90/011,250
`
`Page 10
`
`Art Unit: 3992
`
`Issue #3: Requester asserts a substantial new question of patentability involving claims 1,
`
`8, 14, 20, 22-23, 27-28, 30, 32-33, 37-38, 40, 42-43 and 47-48 as being obvious in view of
`
`Gutterman et a1 and Friesen et al (‘325) or Friescn et al (‘999).
`
`MPEP 2216 states:
`
`“It
`
`is not sufficient that a request for reexamination merely proposes one or more
`
`rejections ofa patent claim or claims as a basisfor reexamination. It mustfirst be demonstrated
`
`that a patent or printed publication that is relied upon in a proposed rejection presents a new,
`
`non-cumuiaiive technological teaching that was not previously considered and discussed on the
`
`record during the prosecution of the application that resuited in the patent for which
`
`reexamination is requested, and during the prosecution o'fany other prior proceeding involving
`
`the patentfor which reexamination is requested”.
`
`The reference to Gutterman et al was cited during the prosecution of US Patent 6,272,132
`
`and is listed on the cover page of this patent. The reference to Guttennan et al was also cited a
`
`Second time during prior reexa‘minatiou proceeding 90t008,576 and is listed on the cover page of
`
`the reexamination certificate resulting from this proceeding and published March 31, 2009. The
`
`introduction of Gutterman et al in this proceeding represents the third time that this exact same
`
`reference has been presented for consideration.
`
`The reference to Gutterman et al was considered by the Examiner in an information
`
`disclosure statement signed by the Examiner on January 9, 2002, and attached to the Notice of
`
`Allowance mailed July 31, 2002. The reasons for allowance attached to the action of July 31,
`
`2002 refers to “the prior art” (page 1, section 2) as being considered in the decision for
`
`patentability. Since Gutter-man et al was part of the prior art in the record at the date of this
`
`
`
`Application/Control Number: 90/011,250
`
`Page 11
`
`Art Unit: 3992
`
`decision, the record reflects that Gutterman et al was previously considered by the examiner.
`
`Gutterman et at was considered a second time by the Examiner in the prior reexamination
`
`90f008,576, as evidenced by the information disclosure statement signed February 28, 2008 at
`
`page 36 (paper of March 4, 2008).
`
`Accordingly, the third re-appearance Gutterman et al
`
`in this proceeding provides no new
`
`technological teachings. Its content was considered during the prior prosecution and is merely
`
`cumulative to the citation of this reference in the prior prosecution history and the prior
`
`reexamination proceeding.
`
`The reference to Friesen et a1 C325) was cited in the record of reexamination 90/003,576.
`
`It was listed as one of the cited references of the proceeding on the reexamination certificate
`published March 31,; 2009. Additionally, Friesen et al C325) was commented on and considered
`
`by the Examiner in the “reasons for patentability" attached to the NIRC action of June 16, 2008.
`
`Accordingly, the re-appearance of Friesen et al C325) in this proceeding provides no new
`
`technological teachings. Its content was considered during the prior reexamination proceeding
`
`90f008,576 and is merely cumulative to the identical citation of this reference in the prior
`
`reexamination proceeding.
`
`The reference to Friesen et al ('999) is the United States Patent which matured from the
`
`laid open application published as Friesen et al C325). The content and technological teachings
`
`of Friesen et al (‘999) correspond with the content and technological teachings of Friesen et al
`
`C325). Requester does not assert any distinction between these references, nor is any distinction
`
`found. Although Friesen et al ('999) was not previously cited, Friesen et a] ('999) presents no
`
`new technological teachings in comparison to Friesen et al C325). The technological teachings
`
`
`
`Application/Control Number: 90l011,250
`
`Art Unit: 3992
`
`Page 12
`
`considered by the examiner for Friesen et a] (‘325) correspond to those teachings of Friesen et al
`
`C999), and thus the teachings are previously considered.
`
`Accordingly, Guttennan et a1, Friesen et al (‘325) and Friesen et a! ('999) do not raise a
`
`substantial new question of patentability for any of the claims 1, 8, 14, 20, 22-23, 27—28, 30, 32-
`
`33, 37-38, 40, 42-43 and 47—48 of US Patent 6,772,132.
`
`Issue #4: Requester asserts a substantial new question of patentability involving claims
`
`14, 40, 42, 43, 47 and 48 as being anticipated by Gutterman et a].
`
`MPEP 2216 states:
`
`“It
`
`is not sufficient that a request for reexamination merely proposes one or more
`
`rejections ofa patent claim or claims as a basis for reexamination. It must first be demonstrated
`
`that a patent or printed publication that is relied upon in a proposed rejection presents a new,
`
`non-cumulative technological teaching that was not previously considered and discussed on the
`x
`
`record during the prosecution of the application that resulted in the patent for which
`
`reexamination is requested, and during the prosecution ofany other prior proceeding involving
`
`the patentfor which reexamination is requested”.
`
`The reference to Gutterman et al was cited during the prosecution of US Patent 6,772,] 32
`
`and is listed on the cover page of this patent. The reference to Gutterman et al was also cited a
`
`second time during prior reexamination proceeding 90l008,576 and is listed on the cover page of
`
`the reexamination certificate resulting from this proceeding and published March 31, 2009. The
`
`introduction of Guttennan et al in this proceeding represents the third time that this exact same
`
`reference has been presented for consideration.
`
`
`
`Applicationt'ControI Number: 90/011,250
`
`Art Unit: 3992
`
`Page 13
`
`The reference to Gutterman et a] was considered by the Examiner in an information
`
`disclosure statement signed by the Examiner on January 9, 2002, and attached to the Notice of
`
`Allowance mailed July 31, 2002. The reasons for allowance attached to the action of July 31,
`
`2002 refers to “the prior art” (page 1, section 2) as being considered in the decision for
`
`patentability. Since Gutterman et al was part of the prior art in the record at the date of this
`
`decision, the record reflects that Gutterman et al was previously considered by the examiner.
`
`Gutterman et al was considered a second time by the Examiner in the prior reexamination
`
`90t008,576, as evidenced by the information disclosure statement‘signed February 28, 2008 at
`
`page 36 (paper of March 4, 2008).
`
`Accordingly, the third re-appearance Gutterman et al
`
`in this proceeding provides no new
`
`technological teachings. Its content was considered during the prior prosecution and is merely
`
`cumulative to the citation of this reference in the prior prosecution history and the prior
`
`reexamination proceeding
`
`Accordingly, Gutterman et al does not raise a substantial new question of patentability for
`
`any ofthe claims 14, 40, 42, 43, 47 and 48 of US Patent 6,772,132.
`
`_ Issue #5: Requester asserts a substantial new question of patentability involving claims I
`
`and 8 in view of LIFE CONNECT and Friesen et at (‘325) or Friesen et al (‘999).
`
`I
`
`MPEP 2216 states:
`
`“it is not sufficient that a request for reexamination merely proposes one or more
`
`rejections of a patent claim or claims as a basis for reexamination. It must first be demonstrated
`
`that a patent or printed pubiicationthat is relied upon in a proposed rejection presents a new,
`
`non-cumulative technological teaching that was not previously considered and discussed on the
`
`
`
`Application/Control Number: 90/011,250
`
`Page 14
`
`Art Unit: 3992
`
`record during the prosecution of the appiicorion that resulted in the patent for which
`
`reexamination is requested, and during the prosecutiOn of any other prior proceeding invoiving
`the patentfor which reexamination is requested”.
`-
`
`LIFE CONNECT was previously considered by the Examiner in the prior reexamination
`
`- 90i008,576, as evidenced by the information disclosure statement signed February 28, 2008 at
`
`page 31 (paper of March 4, 2008). Accordingly, the re-appearance LIFE CONNECT in this
`
`proceeding provides no new technological teachings. Its content was considered during the prior
`
`reexamination proceeding and its submission in this proceeding is merely cumulative.
`
`The reference to Friesen et a1 C325) was cited in the record of reexamination 90i008,576.
`
`It was listed as one of the cited references of the proceeding on the reexamination certificate
`
`published March 31, 2009. Additionally, Friesen et a1 C325) was commented on and considered
`
`by the Examiner in the “reasons for patentability” attached to the NIRC action of June 16, 2008.
`
`.
`
`Accordingly,
`
`the re-appearance of Friesen et a1 C325) in this proceeding provides no new
`
`technological teachings. Its content was considered during the prior reexamination proceeding
`
`90/008,576 and is merely cumulative to the identical citation of this reference in the prior
`
`reexamination proceeding.
`
`The reference to Friesen et al C999) is the United States Patent which matured from the
`
`laid open application published as Friesen et al (‘325). The content and technological teachings
`
`of Friesen et al (‘999) correspond with the content and technological teachings of Friesen et al
`
`C325). Requester does not assert any distinction between these references, nor is any distinction
`
`found. Although Friesen et a] ('999) was not previously cited, Friesen et al ('999) presents no
`
`new technological teachings in comparison to Friesen et a1 C325). The technological teachings
`
`
`
`ApplicationlControl Number: 90l01 1,250
`
`Page 15
`
`ArtUnit: 3992
`
`considered by the examiner for Friesen et al (‘325) correspond to those teachings of Friesen et al
`
`(999), and thus the teachings are previously considered.
`
`Furthermore, MPEP 2242 states:
`
`“A prior art patent or printed publication raises a substantial question ofpatentability
`
`where there is a substantial likelihood that a reasonable examiner would consider the prior art
`
`patent or printed publication important in deciding whether br not the claim is patentable”.
`
`Claim 1 recites:
`
`“displaying market depth of the commodity, through a dynamic display of a plurality of
`
`bids and a plurality ofaslts in the market for the commodity, including at least a portion of the
`
`bid and ask quantities ofthe commodity, the dynamic display being aligned with a static display
`
`_ ofprices corresponding thereto”
`
`The claim chart presented in the request indicates that these features are taught by LFE
`
`CONNECT at pages 7 and F-65. Page 7 of LIFE CONNECT at the last paragraph does generally
`
`reference “market depth” and “best buy and sell” information, but does not clearly indicate the
`
`presence bidlask data or indicate an alignment bidlask data with a static display of prices. Page
`
`F-6S does illustrate diagrams where buy and sell volume a correlated to specific price levels.
`
`While this does illustrate the commodity quantities associated with each price level, it does not
`
`display the plurality of bids and the plurality of asks.
`
`Claim 8 recites:
`
`“a second program code displaying market depth of the commodity, through a dynamic
`
`display of a plurality ofbids and a plurality ofasks in the marlcet for the commodity, including
`
`
`
`Applicationt'Control Number: 90/011,250
`Art Unit: 3992
`
`_
`
`Page 16
`
`the bid and ask quantities of the commodity,
`
`the dynamic display being aligned with a static
`
`display ofprices correSponding thereto“
`
`The claim chart presented in the request indicates that these features are taught by E
`
`CONNECT at pages 7 and F-65. Page 7 of LIFE CONNECT at the last paragraph does generally
`
`reference “market depth” and “best buy and sell” information, but does not clearly indicate the
`
`presence bid/ask data or indicate an alignment bid/ask data with a static display of prices. Page
`
`F-65 does illustrate diagrams where buy and sell volume a correlated to specific price levels.
`
`While this does illustrate the commodity quantities associated with each price level, it does not
`
`display the plurality of bids and the plurality of asks.
`
`Accordingly, a reasonable examiner would not consider LIFE CONNECT important in
`
`evaluating the patentability of claim 1 or claim 8.
`
`Given these consideration, no substantial new question of patentability is raised with
`
`respect to claims 1 and 8 in view of LIFE CONNECT and Friesen et al (‘325) or Friesen et al
`
`(‘999).
`
`Issue #6: Requester asserts a substantial new question of patentability involving claims 1
`
`and 8 in view of SWX Manual and Friesen et al (‘325) or Friesen et al (‘999).
`
`MPEP 2216 states:
`
`“It
`
`is not suflicient that a request for reexamination merely proposes one or more
`
`rejections ofa patent claim or claims as a hasisfor reexamination. It mustfirst be demonstrated
`
`that a patent or printed publication that is relied upon in a pr0posed rejection presents a new,
`
`non-cumulative technological teaching that was not previously considered and discussed on the
`
`record during the prosecution. of the application that resulted in the patent for which
`
`
`
`ApplicationfControl Number: 90i01],250
`
`'
`
`Page I?
`
`Art Unit: 3992
`
`reexamination is requested, and during the prosecution of any other prior proceeding involving
`
`the patentfor which reexamination is requested’.
`
`SWX Manual was previously considered by the Examiner in the prior reexamination
`
`90/008,576, as evidenced by the information disclosure statement signed September 26, 2008 at
`
`page 10 (paper of November 6, 2008). Also note that the examiner placed a notation on this page
`
`stating “All References Considered Except Where Lined Through". Since the SWX Manual
`
`citation (citation #98 on the-page)
`
`is not
`
`lined through,
`
`the record explicitly indicates
`
`consideration of this reference by the Examiner
`
`in the prior
`
`reexamination proceeding.
`
`Accordingly,
`
`the re-appearance SWX Manual
`
`in the present proceeding provides no new
`
`technological teachings. Its content was considered during the prior reexamination proceeding
`
`and its Submission in this proceeding is merely cumulative.
`
`As an additional observation,
`
`the copy of FIG 56 from the SWX Manual does not
`
`correspond to the copy of FIG 56 illustrated by requester at page 82 of the request. FIG 56
`
`appears in the SWX Manual as follows:
`
`
`
`Application/Control Number: 90x011,250
`
`Page 18
`
`Art Unit: 3992
`
`E
`
`-
`
`Em
`
`a. num- dunn- w:- an. up
`
`Fast ”Shh." mwummnmunhmum
`mmWMthdw.hw-dmumm‘fiflduhwwhd
`amwwnmuhhmmmuwwwumm
`
`The same Figure 56 appears in the request at page 82 as follows:
`
`
`
`ApplicationfControl Number: 90f011,250
`
`Page 19
`
`Art Unit: 3992
`
`automatically set to the selected data; only the order size need be entered manually.
`
`Fig. 55: Drop Site Pane and Detailed Order Book Pane. Dragging the selected data on the Normal Sell input Opens an Order
`Entry Mndow for a sell order. irrespective of whether the data was selected on Ills buy or the sell side. Security and prices are
`
`The version of Fig. 56 provided by requester contains highlighted markings for “Bids”,
`
`“Asks” and “Prices” that do not appear in FIG 56 as it
`
`is presented SWX Manual. This
`
`inconsistency raises a question as to whether these columns of data actually reflect bids, prices
`
`and asks. A second observation is that the text caption for FIG 56 indicates that it is displaying
`
`data for a "sell order" instead of a bid placement, raising a further question as to whether i
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