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Not Obvious to Combine for a Person of Ordinary Skill in the Art (POSITA)

Summary: Appellant appealed to the Patent Trial and Appeal Board (“Board”) an obviousness rejection to claims directed to a user interface that displays currency trading information.  Appellant argued in the appeal that the references cited by the Examiner to form the obviousness rejection failed to teach all of the features recited in the claims, whether taken alone or in combination.  The Board overturned the rejection earlier this year in Ex parte Breitenbach, concluding that the combining of the references cited by the Examiner was improper.  No argument was presented by the Appellant to the Board relating to the improperness in combining the references.  This case provides a reminder that such arguments are not futile on appeal.

A closer look at this case follows.

The independent claim on appeal recites (with emphasis added):

  1.  A system comprising at least one computing device coupled to a plurality of other computing devices, the at least one computing device operable at least to:

retrieve market data for a plurality of risk reversals for a currency pair at a first time, at least one of the risk reversals having a first maturity and at least a second risk reversal having a second maturity different than the first;

determine a currency in which to quote skew for each of the risk reversals;

communicate to and therewith causing an interface screen to be displayed at least one of the other computing devices a listing comprising the first and second risk reversals, the market data, and an indication of the determined skew for each of the risk reversals;

retrieve market data for at least one of the first and second risk reversals at a later time;

determine that there has been a change in skew, based on the later retrieved market data, of the at least one of the first and second risk reversals; and

communicate to and therewith refresh the interface screen displayed at the at least one other computing device the later retrieved market data and an indication of the change in skew of the at least one of the first and second risk reversals.

During prosecution, the Examiner relied on a first reference, Rodgers (US 2004/0128225), for the retrieval of market data for risk reversal limitation, and a second reference, Thompson (US 2010/0114756), for the currency determination limitation. The Examiner argued in an Office Action that it was "obvious to use skew as a market indicator in the Rodgers system, in view of Thompson's teaching that skew is a market trend indicator that the investor can consult to make better trade decisions."

On appeal, the Appellant argued that neither Rodgers nor Thompson described or suggested the determining the currency limitation (i.e., “determine a currency in which to quote skew for each of the risk reversals”).  The Board found that Rodgers is directed to trading option contracts, such as currency options, and that Rodgers describes displaying prices for currency pair risk reversals.  However, the Board also found that Rodgers does not describe using skew.  Regarding Thompson, the Board identified Thompson as being directed to providing a visual display of a two-line cross-over method signaling buying and selling opportunities of foreign currency pairs in the foreign exchange.  In addition, the Board found that Thompson lists skew as one of many market trend indicators for analysis but that Thompson does not describe risk reversal.

The Board ultimately found that although Thompson lists skew as one of many market trend indicators for analysis, Thompson neither describes how a skew is used nor describes determining a currency in which to quote skew for risk reversals.  The Board further found that Rodgers describes risk reversals but does not discuss using skew at all.  The Board went on to say that “[a]pparently, the Examiner finds that using market trend indicators, such as skew, is predictable with currency swap market transactions, including risk reversals. This is hard to quarrel with as such, but does not find why one of ordinary skill would determine a currency in which to quote skew for each of the risk reversals.”

As such, the Board relied on the lack of association between the two teachings of Thompson and Rodgers to reverse the obviousness rejection, regardless of the fact that pieces of the claim could be identified in both references.  Therefore, when drafting arguments on appeal, it is not a futile exercise to argue against the combinability of references used in an obviousness rejection.  As seen in this case, such weaknesses in a rejection can win the day on appeal.

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Michael D. Van Loy, PhD, is a Mintz patent attorney and technology protection strategist. Michael works with growing and established companies to create, manage, and improve intellectual property portfolios in the US and abroad. His practice focuses on enforceability and business value.

Monique Winters Macek

Special Counsel

Monique Winters Macek is an Associate whose practice is focused on medical devices, systems, and methods. Before joining Mintz, Monique served as a patent agent. She's registered to practice before the US Patent and Trademark Office.