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`APPUCATION NO.
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`FILING DATE
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`09/590, E.92
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`06/0 ''9/00
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`KEJVIP
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`Ttr10 l /060:::
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`I;JILL.IAM T ELLIS
`FOLEY & LAf~DNER
`WASHINGTON HARBOR
`SUITE 50 0 3000 K STREET NW
`WASHINGTON DC 20007 -5109
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`UNITED STA.ARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER OF PATENTS AND TRADEMARKS
`...-,"""7S~:::::a
`Washington, D.C. 20231
`I
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`ATIOANEY DOCKET NO.
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`FIRST NAMED INVENTOR
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`024051/01:35
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`._ _ ___ _ EXAM __ IN_E_R_· ____ __,I .
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`WEISBERGER , r.;:
`ART UNIT
`PAPER NUMBER
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`2164
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`DATE MAILED:
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`06/0::::/01
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`Please find below and/or attached an Office communication concerning this application or
`proceeding.
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`Commissioner of Patents and Trademarks
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`PT0·90C (Rev.1 1/00)
`Page 1 of8
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`TRADING TECH EXHffiiT 2046
`ffiG ET AL. v. TRADING TECH
`CBM2015-00182
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`1· File Copy
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`Office Action Summary
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`Application No.
`09/590.692
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`Kemp et al.
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`Examiner
`Weisberger Richard C.
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`Group Art Unit
`2164
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`II Iiiii/ 1111 ~!II IIIII )1111111111!1111
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`0 Responsive to communication(s) filed on - - - - - - - - - - - -- -- - -- - -- - - - --
`0 This action is FINAL.
`0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is closed
`in accordance with the practice under Ex parte Quayle, 1935 C. D. 11 ; 453 O.G. 213.
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`three· month(s), or thirty days, whichever
`A shortened statutory period for response to this action is set to expire
`is longer, from the mailing date of this communication. Failure to respond within the period for response will cause the
`application to become abandoned. (35 U.S.C. § 133). Extensions of time may be obtained under the provisions of
`37 CFR 1.136(a).
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`Disposition of Claims
`lXI Claim(sl ..;..1_-4;,..;;0'----- - -- - - - - -- -- -- - - -- - - is/are pending in the application.
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`Of the above, claim (s) ...:.1_,·2:::..;1'--- --
`- - - - - - - - - - - - - - is/are withdrawn from consideration.
`0 Claim(sl - - - -- -- - -- - -- - - - - - - - - - -- - - - is/are allowed.
`IX! Claim(sl 2::.;2:.·...:4..:::0:....._ ____ ______________ ____ __ is/are rejected.
`0 Claim(s)
`0 Claims
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`are subject to restriction or election requirement.
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`is/are objected to.
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`Application Papers
`0 See the attached Notice of Draftsperson 's Patent Drawing Review, PT0-948.
`0 The drawing(s) f iled on
`is/are objected to by the Examiner.
`0 The proposed drawing correction, f iled on
`0 The specification is objected to by the Examiner.
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`is Qpproved
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`0 The oath or declaration is objected to by the Examiner.
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`Ltlisapproved.
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`Priority under 35 U.S.C. § 119
`0 Acknowledgement is made of a claim for foreign priority under 35 U.S.C. § 1191aHd).
`0 All 0 Some• 0 None of the CERTIFIED copies,of the priority documents have been
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`0 received.
`0 received in Application No. (Series Code/Serial Number) - - -- - - --
`0 received in this national stage application from the International Bureau (PCT Rule 17 .2(a)).
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`'
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`•certified copies not received: - - - - - -- -- - -- - - -- - -- -- - -- -- - - - -
`0 Acknowledgement is made of a claim for domestic priority under 35 U.S.C. § 119(e).
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`Attachment(s)
`IX! Notice of References Cited, PT0-892
`0
`Information Disclosure Statement(s), PT0-1449, Paper No(s). ___ _
`0
`Interview Summary, PT0-413
`0 Notice of Draftsperson's Patent Drawing Review, PT0-948
`0 Notice of Informal Patent Application, PT0-152
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`U. S. Patent and Trademark Office
`PT0-326 (Rev. 9-95)
`Page 2 of8
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`- SEE OFFICE ACTION ON THE FOLLOWING PAGES-
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`Office Action Summary
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`Part of Paper No.
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`9
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`Application/Control Number: 09/590,692
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`Page 2
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`Art Unit: 1774
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`DETAILED ACTION
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`Election/Restriction
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`1.
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`Claims 1-21 drawn to a graphical user interface are classified in class 345, subclass
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`327.
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`II.
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`Claims 22-40 drawn to a method, computer readable medium, and client server
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`system for placing a 'trade order, are classified in class 705, subclass 3 7.
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`1.
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`The inventions are distinct, each from the other because of the following reasons:
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`Inventions I and II are unrelated. Inventions are unrelated if it can be shown that they are not
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`disclosed as capable of use together and they have different modes of operation, different
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`functions, or different effects (MPEP § 806.04, MPEP § 808.01). In the instant case the different
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`inventions the inventions have different effects.
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`Because these inventions are distinct for the reasons given above and have acquired a
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`2.
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`separate status in the art as shown by their different classification, restriction for examination
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`purposes as indicated is proper.
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`3.
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`During a telephone conversation with Robert Klinger on May 22, 20001 a provisional
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`election was made without traverse to prosecute the invention of Group II , claims 22-40.
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`Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-
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`21 are withdrawn from further consideration by the examiner, 3 7 CFR 1.14 2(b ), as being drawn
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`to a non-elected invention.
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`Application/Control Number: 09/590,692
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`Page 3
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`Art Unit: 1774
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`4.
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`Applicant is reminded that upon the cancellation of claims to a non-elected invention, the
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`inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently
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`named inventors is no longer an inventor of at least one claim remaining in the application. Any
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`amendment of inventorship must be accompanied by a petition under 3 7 CFR 1.48(b) and by the
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`fee required under 37 CFR 1.17(1).
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`Examiner Requirements for Information (Rule 1.1 05)
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`1. The trade name or industry name or company name of the inventions of claims 22-40.
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`2. All non-patent literature used/relied upon or otherwise related to the drafting of the instant
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`application.
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`3. All non-patent literature used/relied upon or otherwise related to the drafting of the invention
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`of claims 22-40.
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`4. What specifically is being improved upon in the method for placing a trade order, a computer
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`readable medium having program code for placing a trade order, and a client system for placing a
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`trade order.
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`5. All non-patent literature, (i.e. conference papers, presentations, product brochures etc.) used
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`in the invention process including {such as designing around or providing a solution to
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`accomplish the claimed invention)
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`6. Notwithstanding the dates of uses, submittal, or disclosure, any use ofthe claimed invention,
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`any proposals submitted to corporate partners for the use or development of the claimed
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`Page 4 of 8
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`Application/Control Number: 09/590,692
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`Art Unit: 1774
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`invention, any papers presented to industry groups and/consortiums describing the claimed
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`invention.
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`Claim Rejections- 35 USC§ 112
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`5.
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`Claims 22-40 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for
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`failing to particularly point out and distinctly claim the subject matter which applicant regards as
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`the invention.
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`A. The claim limitations "dynamic display" and "static display" are vague and indefinite. The
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`applicant is requested to claim "to what extent", "to what degree", and "on what basis" the
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`displays "change" ..
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`B. The scope of a "single action" (i.e. claim 23) is unclear.
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`C. The limitation "based in part" (i.e. claim 23) is vague indefinite and not defined.
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`D. The claim limitation "current net position" (i.e. claim 25) is not defined.
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`Claim Rejections- 35 USC§ 103
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`6.
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`The following is a quotation of 35 U.S.C. 1 03(a) which forms the basis for all obviousness
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`rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in
`section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are
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`Application/Control Number: 09/590,692
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`Page 5
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`Art Unit: 1774
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`such that the subject matter as a whole would have been obvious at the time the invention was made to a person
`having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the
`manner in which the invention was made.
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`7.
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`Claims 22-40 are rejected under 35 U.S.C. 102(e) as anticipated by or, in the alternative,
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`under 35 U.S.C. 1 03(a) as obvious over--------------------------------------------------
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`http:www. tradingtechnologies.com/products/xtrade _ full.html (viewed on
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`6/01/2001)
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`The applicant's claims are directed to a method for placing a trade order, a computer
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`readable medium having program code for placing a trade order, and a client system for placing a
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`trade order. These three inventions share common limitations and for the most part run parallel.
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`Thus, prior art that discloses the method should inherently teach the computer readable medium
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`and the client system. The prior art (the X trader system) teaches a method comprising the steps
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`of displaying a market depth (see, bid price and ask price column), initiating a trade order with a
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`single action (see, single click trading feature) and _wherein the contents of the trade order are
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`based in part of the preset parameters and the position of the pointer. Moreover, the method is
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`said to include methods of performing both click trades and dime trades with the use of the +/-
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`parameter.
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`Due to the static representation of the prior art, it is difficult to determine if the claim
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`limitations are inherent to or obvious from the X trader system. While the fact patterns are not
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`exactly analogous, the courts have held that where the claimed and prior art products are identical
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`Application/Control Number: 09/590,692
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`Page 6
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`Art Unit: 1774
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`or substantially identical in structure or are produced by identical or substantially identical
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`processes, a prima facie case of either anticipation or obviousness will be considered to have been
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`established over functional limitations that stem from the claimed structure. In re Best, 195 USPQ
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`. 430,433 (CCPA 1977), In re Spada,15 USPQ2d 1655, 1658 (Fed. Cir. 1990). And the court
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`offered the applicant a remedy for overcoming this rejection by asserting that the prima facie
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`case can be rebutted by evidence showing that the prior art products do not necessarily possess
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`the characteristics of the claimed product. In re Best,195 USPQ 430,433 (CCPA 1977)
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`Accordingly, it seems appropriate based in on the co-ownership of the prior art and the claimed
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`invention for the applicant to supply evidence showing that the prior art X Trader system does not
`..
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`possess the characteristics of the claimed product.
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`8.
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure as each establishes a publication date for the X trader to be more than one year prior to
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`the June 9, 2000 filing date of the instant application.
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`Respectfully;
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`~tJ~y
`.
`tl
`Rich Weisberger
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`703 308 4408
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`Application/Control Number: 09/590,692
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`Page 7
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`Ait Unit: 1774
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`Page 8 of 8