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`UNITED STATES DEPARTMENT OF COMMERCE
`United Stntu Patent and Trademark Ofllce
`Address: COMMISSIONER FOR PATENTS
`PO. Box I450
`Alexandria. Virginia 223I3- I450
`wv/w.utpIo.gov
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`90/008,577
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`05/25/2007
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`6766304
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`9554909998
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`6362
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`MBI-IB/TRADING TECHNOLOGIES
`300 SOUTH WACKER DRIVE
`sums 3200
`CHICAGO,
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`IL 60606
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`DATE MAILED; 01/07/2008
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`p1‘0_9oc (Re, W03,
`Page 1 of 6
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`TRADING TECH EXHIBIT 2021
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`TRADESTATION v TRADING TECH
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`Commlsslonarfor Patents
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`United States Patent and Trademark Office
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`~ . UNITED STATES PATENT AND TRADEMARK OFFICE
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`DO NOT USE IN PALM PRINTER
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`(THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS)
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`JAMES L. KATZ
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`BRINKS HOFER GILSON & LIONE
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`NBC TOWER SUITE 3600
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`NORTH CITY FRONT PLAZA DRIVE
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`CHICAGO, IL 6061
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`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
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`REEXAMINATION CONTROL NO. 90/008 577.
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`PATENT NO. 6766304.
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`ART UNIT 3993.
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`Enclosed is a copy of the latest communicationfrom the United States Patent and Trademark
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`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
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`Where this copy is supplied after the reply by requester, 37 CFR 1.535, or the time for filing a
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`reply has passed, no submission on behalf of the ex parte reexamination requester will be
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`acknowledged or considered (37 CFR 1.550(g)).
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`PTOL-465 (Rev.07-04)
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`Page 2 of 6
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`Page 2 of 6
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`Notice of Intent to Issue
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`Ex Parte Reexamination Certificate
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`Control No.
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`90/003,577
`Examiner
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`Patent Under Reexamination
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`6756304
`Art Unit
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`3993
`Jeanne Clark
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`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
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`1. [Z Prosecution on the merits is (or remains) closed in this ex parte reexamination proceeding. This proceeding is .
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`subject to reopening at the initiative of the Office or upon petition. Cf. 37 CFR 1.313(a). A Certificate will be
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`(a) C] Patent owner's communication(s) filed:
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`(b) [:1 Patent owner's late response filed:
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`(c) [:1 Patent owner's failure to file an appropriate response to the Office action mailed:
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`(d) [:1 Patent owner's failure to timely file an Appeal Brief (37 CFR 41.31).
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`(e) IXI Other: Patent owner did not file comments after order grant.
`Status of Ex Parte Reexamination:
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`(f) Change in the Specification:
`[3 Yes [2] No
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`(g) Change in the Drawing(s):
`I] Yes XI No
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`(h) Status of the C|aim(s):
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`(1) Patent cIaim(s) confirmed: 1-40.
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`(2) Patent c|aim(s) amended (including dependent on amended claim(s)):
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`(3) Patent cIaim(s) cancelled:
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`-(4) Newly presented c|aim(s) patentablez
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`(5) Newly presented cancelled claims:
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`7. [:1 Note attached Examiners Amendment.
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`8. [:1 Note attached interview Summary (PTO-474).
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`9. |:I Other: __
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`reuester
`cc: Re uester if third --
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`U.S. Patent and Trademark Office
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`PTOL—469 (Rev.08-06)
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`Page 3 of 6
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`Notice of Intent to Issue Ex Parte Reexamination Certificate
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`Part of Paper No -
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`2. IX] Note the attached statement of reasons for patentability and/or confirmation. Any comments considered
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`necessary by patent owner regarding reasons for patentabilityand/or confirmation must be submitted promptly
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`to avoid processing delays. Such submission(s) should be labeled: “Comments On Statement of Reasons for
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`Patentability and/or Confirmation.”
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`3. CI Note attached NOTICE OF REFERENCES ClTED4(PTO-892).
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`4. [:1 Note attached LIST OF REFERENCES CITED (PTO/SB/08).
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`E] disapproved.
`5. I:I The drawing correction request filed on
`[:1 approved
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`6. El Acknowledgment is made of the priority claim under 35 U.S.C. § 119(a)-(d) or (f).
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`b)[:] Some*
`c)l:l None
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`a)I:] All
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`[:] been received.
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`[:1 not been received.
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`[:1 been filed in Application No.
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`I] been filed in reexamination Control No.
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`[:1 been received by the International Bureau in PCT Application No.
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`* Certified copies not received: __
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`is:
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`Page 3 of 6
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`Application/Control Number: 90/008,577
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`Art Unit: 3993
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`Page 2
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`STATEMENT OF REASONS FOR PATENTABILITY AND/OR CONFIRMATION
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`The following is an examiner's statement of reasons for patentability and/or confirmation
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`of the claims found patentable in this reexamination proceeding: The prior art of record fails to
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`teach a method, or computer readable medium having a dynamic display of bid and ask regions
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`in a commodity market positioned along a common static price axis, such that when the inside
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`market changes, the price levels along the common static price axis do not move in combination
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`with the other claim limitations in independent claims 1 and 27. Dependent claims 2-26 and 28-
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`40 are found patentable for the same reason.
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`Although TSE (Orientation) A, TSE (Operation) B, Amazon, and Friesen raised a
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`substantial new question of patentability as set forth in the order granting reexamination dated
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`August 2, 2007, these references do not anticipate the above—mentioned claim limitations and do
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`not render the claims obvious. TSE (Orientation) A and TSE (Operation) B clearly teach that the
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`display of prices is automatically updated every three seconds so as to keep the “center price” in
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`the middle of the screen. This teaching is directly counter to the static display of U.S. Patent No.
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`6,766,304, which uses the static common static price axis so that the user does not accidentally
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`place an order at the unintended price (see column 2 lines 60-68). The requester relies on the
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`one statement in TSE (Operation) B on page 640, which states that in the scroll screen the price
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`display locations do not change automatically, for the teaching of a common “static” price axis.
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`This teaching does not meet the claim limitations, as it is only a teaching that the automatically
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`centering of the “center price” does not occur when the user is in the scroll mode. If it did, the
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`user would not be able to scroll to the desired price, because the scrolling would result in the
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`Page 4 of 6
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`Page 4 of 6
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`Application/Control Number: 90/008,577
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`Art Unit: 3993
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`Page 3
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`“center price” not being in the center of the screen. Amazon and Friesen also do not teach such
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`claim limitations nor render the claims obvious.
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`Any comments considered necessary by PATENT OWNER regarding the above
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`statement must be submitted promptly to avoid processing delays. Such submission by the
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`patent owner should be labeled: "Comments on Statement of Reasons for Patentability and/or
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`Confirmation" and will be placed in the reexamination file.
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`Court related documents
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`On October 24, 2007, Patent owner’s representative and the examiner discussed the
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`submission of court related documents and documents material to the examination. To date, the
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`Patent owner has not submitted any such documents. While the examiner does not disagree
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`with the patent owner’s summary of the interview on October 24, 2007, the examiner would like
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`to clarify that the representative was informed that unduly large submissions of documents
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`“may” be returned or not entered in accordance with MPEP 2282. In addition, the examiner is
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`unclear what the patent owner’s representative is suggesting in the last paragraph of their
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`summary. To the extent that the patent owner’s representative is suggesting that the examiner
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`stated that they are excused from their duty of disclosure under 37 CFR 1.56 and 1.555, such is
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`not the case. The examiner has no authority to do so. The patent owner is advised that entry of
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`prior art submissions or any other documents related to the merits of the proceedings must be
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`filed with a petition under 37 CFR 1.182 in accordance with MPEP 2287.
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`Page 5 of 6
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`Page 5 of 6
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`Application/Control Number: 90/008,577
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`Art Unit: 3993
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`Please mail any communications to:
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`Conclusion
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`Attn: Mail Stop “Ex Parte Reexam”
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`Central Reexamination Unit
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`Commissioner for Patents
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`P.O. Box 1450
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`Alexandria, VA 22313-1450
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`Please FAX any communications to:
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`(571) 273-9900
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`Central Reexamination Unit
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`Please hand-deliver any communications to:
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`Attn: Central Reexamination Unit
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`Randolph Building, Lobby Level
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`401 Dulany Street
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`Any inquiry concerning this communication or earlier communications from the Examiner, or as
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`to the status of this proceeding, should be directed to the Central Reexamination Unit at
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`telephone number (571) 272-7705.
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`Signed:
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`__/Jeanne M. Clark/
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`Jeanne M Clark
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`CRU Examiner
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`GAU 3993
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`(571) 272-7714
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`Conferee:
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`Conferee: 1 4
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`Page 6 of 6
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