Appeal 2007-0394
Application 09/769,036
Appellants further contend that Hawkins fails to teach “an executing affiliate
that electronically executes a transaction order on the exchange, as recited by the
claim” (Br. 17). More specifically, Appellants contend that Hawkins fails to teach
an executing affiliate as claimed in as much as “Hawkins’ transaction orders may
very well be executed manually as opposed to electronically, since Hawkins
apparently makes no mention of electronic execution” (Br. 17). We disagree.
During prosecution, claim language is given its broadest reasonable
interpretation as it would be understood by one of ordinary skill in the art, taking
into account any definitions or other guidance that may be afforded by Appellants’
specification. See In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027
(Fed. Cir. 1997). However, ultimately, it is Appellants’ burden to precisely define
the invention, not the PTO’s. Id. at 1056. Claim 3 recites “a computerized
executing affiliate in a second country suitable for electronically receiving said
transaction order and executing said transaction order on the exchange.” As such,
the claimed invention requires only that the executing affiliate be suitable for
electronically receiving the transaction order. The claim does not require the
executing affiliate to electronically execute the transaction, as suggested by
Appellants. Hawkins teaches an executing broker 101 in another country which
electronically receives a transaction order from the originating broker 100 via host
102 and executes the order (Finding of Fact 14). As such, Appellants’ argument
that Hawkins’s transaction orders may be executed manually as opposed to
electronically, does not distinguish Hawkins from the claimed invention.
Furthermore, even if arguendo, claim 3 were interpreted to require that the
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