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.
`
`90/011,250
`
`09/22/2010
`
`6772132
`
`049506/296191
`
`3537
`
`07115/2011
`39310
`7590
`MBHB/TRADING TECHNOLOGIES
`300 SOUTH WACKER DRIVE
`SUITE 3200
`CHICAGO, IL 60606
`
`EXAMINER
`
`ART UNIT
`
`PAPER NUMBER
`
`DATE MAILED: 07/15/2011
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PT0-90C (Rev. 10/03)
`
`Page 1 of 19
`
`TRADING TECH EXHIBIT 2038
`IBG ET AL. v. TRADING TECH
`CBM2015-00182
`
`

`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`THIRD PARTY REQUESTER'S CORRESPONDENCE ADDRESS
`BANK OF AMERICA PLAZA
`101 SOUTH TRYON STREET,
`SUITE 4000
`CHARLOTTE, NC 28280-4000
`
`Commissioner for Patents
`United States Patents and Trademark Office
`P.O.Box 1450
`Alexandria, VA22313-1450
`www.uspto.gov
`
`.:.nate:
`
`fVIAILED
`JLlij ~zwvv
`CENTRAL
`.
`REEXAMINATION UNIT
`
`EX PARTE REEXAMINATION COMMUNICATION TRANSMITTAL FORM
`
`REEXAMINATION CONTROL NO.: 90011250
`PATENT NO.: 6772132
`ART UNIT : 3993
`
`Enclosed is a copy of the latest communication from the United States Patent and Trademark
`Office in the above identified ex parte reexamination proceeding (37 CFR 1.550(f)).
`
`Where this copy is supplied after the reply 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(g)).
`
`Page 2 of 19
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`

`
`United States Patent and Trademark Office
`
`Commissioner for Patents
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`www.uspto.gov
`
`(For Patent Owner)
`
`MAILED
`JlDl] ~l~VV
`CENTRAL REEXAMINATION UNIT
`
`(For Requester)
`
`MBHB!fRADING TECHNOLOGIES
`300 SOUTH WACKER DRIVE
`SUITE 3200
`CHICAGO, IL 60606
`
`ALSTON & BIRD
`BANK OF AMERICA PLAZA
`101 SOUTH TRYON STREET, SUITE 4000
`CHARLOTTE, NC 28280-4000
`
`In re Kemp, II et alia
`Reexamination Proceeding
`Control No. 90/011,250
`For: U.S. Patent No. 6,772,132
`
`: DECISION DENYING
`: PETITION UNDER
`: 37 CFR 1.515(c)
`
`This is a decision on the January 14,2011 paper entitled "PETITION TO REVIEW REFUSAL
`TO ORDER REEXAMINATION (37 C.F.R. §1.515(c))". The petition was timely filed. A fee
`of $400 was required. The petition is before the Director of the Central Reexamination Unit for
`decision.
`
`The petition is DENIED for the reasons set forth below.
`
`REVIEW OF FACTS
`
`1. U.S. Patent No. 6,772,132 (hereinafter, the '132 patent) issued on August 3,
`2004 to Kemp II, et alia.
`
`2. On September 22, 2010, a request for ex parte reexamination was deposited by a
`third party requester requesting claims 1-2, 8, 14, 20, 22-23, 25, 27-28, 30, 32-
`33, 37-38,40, 42-43, 47-48, and 53 of the' 132 patent be reexamined. This
`reexamination proceeding was assigned Control No. 90/011,250 (hereinafter, the
`'11250 reexamination proceeding).
`
`Page 3 of 19
`
`

`
`Control Number: 90/011 ,250
`Art Unit: 3992
`
`3. An order denying the request for ex parte reexamination was mailed on
`December 14, 2010.
`
`4. On January 14, 2011, the present petition was file~.
`
`DECISION
`
`I. Review of the Examiner's Order Denying Reexamination
`Third party requester ("Petitioner") in the '11250 reexamination proceeding has petitioned
`seeking relief from the examiner's December 14, 2010 Order denying ex parte reexamination. 1
`
`35 U.S.C. § 303(c) provides:
`
`A determination by the Director pursuant to subsection (a) of this section that no substantial
`new question of patentability has been raised will be final and nonappealable. Upon such a
`determination, the Director may refund a portion of the reexamination fee required under
`section 302 of this title.
`
`37 CFR § 1.515(c) provides:
`
`The requester may seek review by a petition to the Director under 3 7 CFR § 1.181 within one
`month of the mailing date of the examiner's determination refusing ex parte reexamination. Any
`such petition must comply with 3 7 CFR § 1.181 (b). If no petition is timely filed or if the
`decision on petition affirms that no substantial new question of patentability has been raised,
`the determination shall be final and nonappealable."
`
`MPEP § 2248 provides, in pertinent part:
`
`If a petition seeking review of the examiner's determination refusing reexamination is filed, it is
`forwarded (together with the reexamination file) to the Office of the CRU Director for decision.
`Where a petition is filed, the CRU Director will review the examiner's determination that a
`substantial new question of patentability has not been raised. The Director's review will be de
`novo.
`
`1 The Petition petitioned for relief in the fonn of"(a) reexamination ofthe '132 patent on the grounds set forth in
`the Request for Reexamination No. 90/011,250 of September 22, 2010; or (b) have the Examiner reconsider the
`Request for Reexamination of September 22, 2010 under the appropriate standard; or (c) pennit the Requestor to
`re-ftle the Request for Reexamination without prejudice and strike the Examiner's Refusal to Order Reexamination
`of December 14, 2010."
`
`Page 4 of 19
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`

`
`Control Number: 90/011 ,250
`Art Unit: 3992
`
`Each decision by the CRU Director will conclude with the paragraph:
`
`"This decision is final and nonappealable. See 35 U.S.C. 303(c) and 37 CFR 1.515(c). No
`further communication on this matter will be acknowledged or considered."
`
`II. De Novo Review of the Reguest for Reexamination - Findings and Analysis
`
`In accordance with the requirements of the reexamination statute and rules, a review of the
`record has been undertaken prior to the preparation of this decision. A de novo determination,
`taking into account the third party requester's position, as presented in the instant petition, has
`been made as to whether the December 14, 2010 request for ex parte reexamination raises at
`least one substantial new question of patentability (hereinafter "SNQ"). For the reasons set
`forth below, the request for reexamination of the '132 patent filed in the '11250 reexamination
`proceeding has been found not to present any SNQ. Therefore, the examiner's decision to deny
`reexamination is proper.2
`
`The '132 patent matured from application number 09/590,692 (the '692 application). During
`prosecution of the '692 application, the examiner allowed claims 22-70, renumbered as 1-49, in
`a first Notice of Allowance mailed July 31,2002 stating as the reasons therefore:
`
`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, directed 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 static price
`values. Theses features in combination with the claim features of claims 22, 29
`. and/or 35 render the claims allowable .
`
`PCT W099/23099 is representative of the closest Foreign P!itent prior art.
`
`.
`
`The closet US Patent prior art and Non Patent Literature prior art are of record.
`
`Subsequent to further prosecution of the '692 application, the examiner again allowed claims
`22-70 as well as claims 89-95, renumbered as 1-56, in a second Notice of Allowance mailed
`February 10, 2004 stating as the reasons therefore:
`
`2 The Examiner's decision, although arguably wanting for more artful presentation, does not rise to level of
`"arbitrary, capricious, an abuse of discretion or otherwise not in accordance with the law" as argued by the
`Petition.
`
`Page 5 of 19
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`

`
`Control Number: 90/011,250
`Art Unit: 3992
`
`This statement of reasons for allowance includes the major differences in the
`claims not found in the prior art of record3 and reasons why that [sic] differences
`are considered to define patentably over the prior art. The statement is not
`intended to necessarily state all the reasons for allowance or all the details why
`claims are allowed and should not be relied upon for this purpose. Rather, this
`statement reflects what the examiner considers important and therefore the
`primary reasons for the allowance of the claims.
`
`The primary reason for allowance is the limitation directed to the "dynamic
`display" of a plurality of the quantity ofbids and asks aligned with a "static
`display" of corresponding prices. Here, unlike the prior art, the "static" display
`of prices 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 of the
`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 18 will send an order to the market to sell 17 lots of the
`commodity at a price of 89.
`
`The closest prior art including US Patent 6,408,282, PCT WO 01116852 and
`commonly owned non-patent literature "X Trader" (see, applicant's response to
`USPTO's request for information) all lack this feature ...
`
`On April 6, 2007, a request for ex parte reexamination was deposited by a third party requester
`requesting claims 1-56 of the '132 patent be reexamined. This reexamination proceeding was
`assigned Control No. 90/008,576 (hereinafter, the '08576 reexamination proceeding). Turning
`to the request of the '08576 reexamination proceeding, the section of the request entitled
`"STATEMENT OF SUBSTANTIAL NEW QUESTION OF PATENTABILITY" (see page 4)
`and the section entitled "D. Dependent claims 23, 33 and 43" (see pages 151-153) sets forth
`requester's position with regard to the references, i.e. patents or printed publications, cited in
`the request (i.e. the patents or printed publications to The TSE Orientation Materials, TSE
`Operation Procedures, Friesen4 and Amazon), i.e.:
`
`... were not cited to, nor considered by, the Examiner in the original prosecution
`that led to the allowance and issuance of the Kemp '132 patent and are both non(cid:173)
`cumulative and more pertinent than the cited references. Therefore, there is a
`substantial likelihood that a reasonable examiner would consider the TSE
`Orientation Materials, TSE Operation Procedures, Friesen and Amazon
`references important in deciding whether or not the claims are patentable.
`Accordingly, whether the issued claims of the Kemp '132 patent are patentable
`over the teachings of the TSE Orientation Materials, TSE Operation Procedures,
`
`3 U.S. Patent No. 5,297,031 to Gutterman et al was made of record on July 31, 2002. PCT WO 01/16852, in
`which Friesen et al are the inventors was made of record February 11, 2003.
`4 U.S. Patent Application Publication No. 2003/0097325, entitled "USER INTERFACE FOR AN ELECTRONIC
`TRADING SYSTEM," filed April9, 1999 and published May 22,2003, to Friesen et al.
`
`Page 6 of 19
`
`

`
`Control Number: 90/011,250
`Art Unit: 3992
`
`Friesen and Amazon references, as applied below, is a substantial new question
`of patentability.
`
`and
`
`Whether claim ... is patentable over the teachings of the TSE Orientation
`Materials and TSE Operation Procedures references and further in view of
`Friesen is a substantial new question of patentability as the TSE Orientation
`Materials, TSE Operation Procedures and Friesen references were not cited to,
`nor considered by, the Examiner in the original prosecution that led to the
`allowance and issuance of the Kemp' 132 patent and are both non-cumulative
`and more pertinent than the cited references and there is a substantial likelihood
`that a reasonable examiner would consider these references important in
`deciding whether or not the claim is paten~ble .
`
`. . . In particular, the following claim limitation would have been obvious to one
`of ordinary skill in the art at the time the invention was made: wherein said
`displaying the market depth of a commodity traded in a market further comprises
`displaying said bids and asks in different colors, as claimed in claim 23 (See
`Friesen, paras. 8 and 3 7).
`
`The USPTO mailed an Order Granting Request for Ex Parte Reexamination on August 1, 2007
`2010. In such Order the Examiner set forth at, e.g., pages 6, 7, 8 and 9:
`
`TSE ... has teachings to similar method steps or apparatus to the claim
`limitations (e.g., a dynamic display of bids and asks aligned with a display of
`prices and order entry region) cited to in the reasons for allowance in application
`number 09/590,693 [sic] that issued as the 6,722,132 patent. Therefore, there is a
`substantial likelihood that a reasonable examiner would consider these teachings
`important in deciding whether or not these claims are patentable. Accordingly,
`TSE ... raises a substantial new question of patentability as to Claims 1-56,
`which question has not been decided in a previous examination of the 6,722,132
`patent.
`
`Amazon has teachings to similar method steps or apparatus to the claim
`limitations (e.g., an order entry region that allows entry of an order through a
`single action of the user) cited to in the reasons for allowance in application
`number 09/590,693 [sic] that issued as the 6,722,132 patent. Therefore, there is a
`substantial likelihood that a reasonable examiner would consider these teachings
`important in deciding whether or not these claims are patentable. Accordingly,
`Amazon raises a substantial new question of patentability as to Claims 1, 3, 8,
`10, 14, and 16, which question has not been decided in a previous examination
`of the 6, 722,132 patent.
`
`Page 7 of 19
`
`

`
`Control Number: 90/011,250
`Art Unit: 3992
`
`Friesen, like the invention claimed in the 6,772, 132 [sic] patent, recognizes the
`importance of display trading data in an intuitive format, which allows for the
`trader to make informed decisions quickly and has teachings to graphical user
`interface that creates an intuitive display of data combined with a single action
`order entry region (e.g., an order entry region that allows entry of an order
`through a single action of the user) cited to in the reasons for allowance in
`application number 09/590,693 [sic] that issued as the 6,722,132 patent.
`Therefore, there is a substantial likelihood that a reasonable examiner would
`consider these teachings important in deciding whether or not these claims are
`patentable. Accordingly, Amazon raises a substantial new ·question of
`patentability as to Claims 23, 33, and 43, which question has not been decided in
`a previous examination of the 6, 722,132 patent.
`
`Therefore, TSE (Orientation) A, TSE (Operation) B, Amazon, and Friesen raise
`a substantial new question of patentability as to claims 1-56, which question has
`not been decided in a previous examination of U.S. Patent No. 6,772,132.
`
`The USPTO mailed a Notice oflntent to Issue Ex Parte Reexamination Certificate on January
`16, 2008. In such Notice the Examiner set forth:
`
`The prior art of record fails to teach a method, computer readable medium, or
`a system having a dvnamic display of bids and asks in a commoditv 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 1. 8 and
`H.:. Dependent claims 2-7, 9-13, and 15-56 are found patentable for the same
`reason.
`
`Although TSE (Orientation) A, TSE (Operation) B, Amazon, and Friesen raised
`a substantial new question of patentability as set forth in the order granting
`reexamination dated August 1, 2007, these references do not anticipate the
`above-mentioned claim limitations and do not render the claims obvious. TSE
`(Orientation) A and TSE (Operation) B clearly teach that the display of prices is
`automatically updated every three seconds so as to keep the "center price" in the
`middle of the screen. This teaching is directly counter to the static display of
`U.S. Patent No. 6,772,132, which uses the static display of prices so that the user
`does not accidentally place an order at the unintended price (see column 2lines
`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 of prices. 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 of
`
`Page 8 of 19
`
`

`
`Control Number: 90/011 ,250
`Art Unit: 3992
`
`the screen. Amazon and Friesen also do not teach such claim limitations nor
`render the claims obvious.
`
`(Emphasis added.)
`
`Patent Owner filed an IDS on January 15, 2008 which crossed the Notice in the mail. The IDS
`was considered by the Examiner on February 28, 2008. The USPTO mailed out a
`communication on March 4, 2008 in which the Examiner stated:
`
`An information disclosure statement (IDS) was filed on January 15, 2008, one
`day prior to the mailing of the Notice oflntent to Issue A Reexamination
`Certificate. This information disclosure has been considered by the examiner,
`and the initialed forms are attached. 5 The IDS submitted was voluminous and
`had numerous seemingly duplicative citations. Citations that are lined through
`are either because it is duplicative or that a copy of the citation could not be
`located in the file record ....
`
`In accordance with MPEP 609.05(b), consideration by the examiner of the
`information submitted in an IDS means that the examiner considered the
`documents in the same manner as other documents in Office search files are
`considered by the examiner while conducting a search of the prior art in a proper
`field of search. The initials of the examiner placed adjacent to the citations on
`the form PTO/SB/08A and 08B or its equivalent mean that the information has
`been considered by the examiner to the extent noted above. Information which
`complies with requirements as discussed in this section but which is in a non·
`English language will be considered in view of the concise explanation
`submitted (see MPEP § 609.04(a), subsection III.) and insofar as it is understood
`on its face, e.g., drawings, chemical formulas, in the same manner that non·
`English language information in Office search files is considered by examiners
`in conducting searches.
`
`The IDS does not effect the issuance of the Notice of Intent to Issue an
`Reexamination Certificate, mailed on January 16, 2008. Accordingly, that
`action still stands.
`
`5 The initialed, i.e. considered, citations included those to The Application Program Interface (API) Reference
`Manual for LIFFE ConneCt, 9/00/I998, release 3 .I, EP I 3I9 2II B I Exhibit 7 A, eS0060 146-eS006023 7 and
`U.S. Patent No. 5,297,031 to Gutterman et al. The crossed thru citations included that to Swiss Exchange SWX
`Exchange TS User Manual V2.1, 12/31/1998.
`
`Page 9 of 19
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`

`
`Control Number: 90/011,250
`Art Unit: 3992
`
`(Emphasis added)
`
`Patent Owner also filed another IDS on April 28, 2008 for reasons including to provide copies
`of previous citations in the 1-15-08 IDS for which "a copy of the citation could not be located
`in the file record" by the Examiner. The IDS was considered on September 26, 2008. The
`USPTO mailed an Interview Summary form on November 6, 2008 in which the Examiner
`stated "[a]ttached to this interview summary is the initialed IDS listing.''6
`
`An Ex Parte Reexamination Certificate for the' 132 patent issued on March 31, 2009.
`
`Turning back to the '11250 reexamination proceeding, this second request for ex parte
`reexamination was deposited by a third party requester requesting claims 1-2, 8, 14, 20, 22-23,
`25, 27-28, 30, 32-33, 37-38, 40, 42-43, 47-48 and 53 of the '132 patent be reexamined. The
`section of the request entitled "Statement of Substantive New Question of Patentability" ( esp.
`pages 2 and 13-16) sets forth requester's position that the references cited in the request (i.e.
`Friesen, Gutterman, LIFFE CONNECT and SWX, see footnotes 2-5 supra) raise a substantial
`new question of patentability as to claims 1-2, 8, 14, 20, 22-23, 25, 27-28, 30, 32-33, 37-38, 40,
`42-43,47-48 and 53 of the '132 patent, because "[s]pecifically, and as discussed in more detail
`below, each of these claims is invalid as anticipated by, or obvious in view of, Gutterman,
`Friesen, LIFFE CONNECT, and SWX, alone or in combination" and "[t]he written record of
`the '132 patent, as well as that of the '8576 Reexamination, contains no consideration by any
`Examiner of whether the prior art, as currently presented and discussed, renders the claimed
`subject matter anticipated or obvious in view of" such art.
`
`Turning specifically to the references to Friesen, i.e. U.S. Patent Publication No. US 2003-
`0097325 A1 or Patent No. 7,212,999 which matured from the application, the Request states at
`page 13:
`
`The Friesen publication was not cited to, or by, the Examiner during the
`prosecution of the '692 application. Though the PCT publication that
`corresponds to the Friesen publication was cited, the Friesen PCT publication
`is not prior art under§ 102(e). The Friesen publication is, however, prior art
`under § 1 02( e). Thus; the teachings of the Friesen publication of a graphical
`user interface having a dynamic display of a market in a commodity in
`which a trade order is placed by a single action of a user input device was
`not considered. See e.g., Fig. 3b of the Friesen publication. During the '8756
`[sic] Reexamination, the Friesen publication was cited only as a secondary
`reference; the Central Reexamination Unit never considered or analyzed the
`above referenced teachings of the Friesen publication. Further, the Friesen
`publication was not applied in any rejection of the claims, nor discussed on the
`
`6 The initialed IDS included citation to Swiss Exchange SW:X:-TS User Manual, 12/31/1998, DTX 2215,
`eS0032393-eS0032547.
`
`Page 10 of 19
`
`

`
`Control Number: 90/011,250
`Art Unit: 3992
`
`record during either the prosecution of the '692 application, or that of the
`'8756 [sic] Reexamination. (Bold emphasis added.)
`
`However, the discussion ignores the prosecution history of the '132 patent, see supra.1 The
`teachings of Friesen outlined in this request (e.g., supra and pages 17-41) were considered and
`discussed in the '08567 reexamination proceeding for the same reasons, esp. note again the
`January 16, 2008 Notice, i.e.:
`
`The prior art of record fails to teach a method, computer readable medium, or
`a system having a dvnamic 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 1, 8 and
`14. Dependent claims 2-7, 9-13. and 15-56 are found patentable for the same
`reason.
`
`Although TSE (Orientaiion) A, TSE (Operation) B, Amazon, and Fries~n raised
`a substantial new question of patentability as set forth in the order granting
`reexamination dated August 1, 2007, these references do not anticipate the
`above-mentioned claim limitations and do not render the claims obvious. TSE ·
`(Orientation) A and TSE (Operation) B clearly teach that the display of prices is
`automatically updated every three seconds so as to keep the "center price" in the
`middle of the screen. This teaching is directly counter to the static display of
`U.S. Patent No. 6,772,132, which uses the static display of prices 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) Bon page
`640, which states that in the scroll screen the price display locations do not
`change automatically, for the teaching of a "static" display of prices. 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 of
`the screen. Amazon and Friesen also do not teach such claim limitations nor
`render the claims obvious.
`
`To this point, MPEP 2216, Substantial New Question of Patentability, is instructive:
`
`Under 35 U.S.C. 304, the Office must determine whether "a substantial new
`question of patentability" affecting any claim of the patent has been raised. 3 7
`CFR 1.51 O(b )(1 )requires that a request for ex parte reexamination include "a
`statement pointing out each substantial new question of patentability based on
`prior patents and printed publications." If such a new question is found, an order
`for ex parte reexamination of the patent is issued. It is therefore important that
`the request clearly set forth in detail what the requester considers the "substantial
`
`7 See also page 9, line 1-page 10, line 3 of the Petition.
`
`Page 11 of 19
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`

`
`Control Number: 90/011,250
`Art Unit: 3992
`
`new question of patentability" to be in view of prior patents and printed
`publications. The request must point out how any questions of patentability
`raised are substantially different from those raised in the previous examination
`of the patent before the Office.
`
`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 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 patent for which reexamination is requested. See also MPEP § 2242.
`
`The legal standard for ordering ex parte reexamination, as set forth in 35 U.S.C.
`303(a), requires a substantial new question of patentability. The substantial new
`question of patentability may be based on art previously considered by the
`Office if the reference is presented in a new light or a different way that
`escaped review during earlier examination ....
`After the enactment of the Patent and Trademark Office Authorization Act of
`2002 ("the 2002 Act"), a substantial new question of patentability can be raised
`by patents and printed publications "previously cited by or to the Office or
`considered by the Office" ("old art"). The 2002 Act did not negate the statutory
`requirement for a substantial new question of patentability that requires raising
`new questions about pre-existing technology. In the implementation of the
`2002 Act, MPEP § 2242, subsection II.A. was revised. The revision permits
`raising a substantial new question of patentability based solely on old art. but
`only if the old art is "presented/viewed in a new light, or in a different way,
`as compared with its use in the earlier concluded examination(s). in view of
`a material new argument or interpretation presented in the request." ...
`(Emphasis added.)
`·
`
`as is MPEP 2242, Criteria for Deciding Request, I. SUBSTANTIAL NEW QUESTION OF
`PATENTABILITY:
`
`The presence or absence of "a substantial new question of patentability"
`determines whether or not reexamination is ordered. The meaning and scope
`of the term "a substantial new question of patentability" is not defined in the
`statute and must be developed to some extent on a case-by-case basis, using
`the case law to provide guidance as will be discussed in this section.
`
`If the prior art patents and printed publications raise a substantial question of
`patentability of at least one claim of the patent, then a substantial new
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`Page 12 of 19
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`

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`Control Number: 90/011 ,250
`Art Unit: 3992
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`question of patentability is present, unless the same question· of patentability
`has already been decided ... (B) by the Office in a previous examination or
`pending reexamination of the patent. A "previous examination" of the patent
`is: (A) the original examination of the application which matured into the
`patent; or (C) the examination of the patent in an earlier pending or
`concluded reexamination ....
`
`A prior art patent or printed publication raises a substantial question of
`patentability where there is a substantial likelihood that a reasonable
`examiner would consider the prior art patent or printed publication important
`in deciding whether or not the claim is patentable. If the prior art patents
`and/or publications would be considered important, then the examiner should
`find "a substantial new question of patentability" unless the same question of
`patentabilitv has already been decided as to the claim ... by the Office in a
`previous examination. For example, the same question of patentability may
`have already been decided by the Office where the examiner finds the
`additional (newly provided) prior art patents or printed publications are
`merely cumulative to similar prior art already fully considered by the
`Office in a previous examination of the claim.
`
`For "a substantial new question of patentability" to be present, it is only
`necessary that: (A) the prior art patents and/or printed publications raise a
`substantial question of patentability regarding at least one claim, i.e., the
`teaching of the (prior art) patents and printed publications is such that a
`reasonable examiner would consider the teaching to be important in deciding
`whether or not the claim is patentable; and (B) the same question of
`patentability as to the claim has not been decided by the Office in a previous
`examination or pending reexamination of the patent or in a final holding of
`invalidity by the Federal Courts in a decision on the merits involving the
`claim ....
`
`(Emphasis added.)
`
`Friesen does not raise a substantial new question of patentability because the technological
`teachings thereof are not "presented/viewed in a new light, or in a different way, as compared
`with its use in the earlier concluded examination(s), in view of a material new argument or
`interpretation presented in the request", i.e. namely it is presented for technological teachings
`that were previously considered and discussed on the record for the same use/reason/light/way,
`i.e. anticipation and/or obviousness of the same claim limitations,
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`Page 13 of 19
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`Control Number: 90/011,250
`Art Unit: 3992
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`during a prior proceeding involving the patent for which reexamination is requested. 8
`Turning now specifically to Gutterman, i.e. U.S. Patent No. 5,297,031, the Request
`states at page 14:
`
`The Gutterman patent was cited by the patent owner in an information disclosure
`statement in the original examination. Although the Examiner initialed the
`information disclosure statement, no evidence exists that the Examiner
`considered any of the technical teachings of the Gutterman patent to a
`degree greater than documents are generally considered during a search of
`Office file records. The Gutterman patent teaches a client system for placing a
`trade order having a parameter setting component, a display device, a user input
`device, and a trade order sending component, i.e., the subject matter of Claim
`8. E.g., col. 7: 19-27. Furthermore, the Gutterman patent was not applied in any
`rejection of the claims, or discussed on the record during either the
`prosecution of the '692 application, or that of the '8756 [sic] Reexamination.
`
`·
`
`(Bold emphasis added.)
`
`However, as with the Friesen reference, the discussion ignores the prosecution history of the
`'132 patent, see supra. The teachings of Gutterman outlined in this request (e.g., supra and
`pages 41-68) were considered and discussed for the same reasons not only in the '08567
`reexamination proceeding, esp. note again the January 15, 2008 IDS the USPTO mailed out on
`March 4, 2008 in which the Examiner stated:
`
`The IDS does not effect the issuance of the Notice of Intent to Issue an