Ex Parte Gilbert et alDownload PDFPatent Trial and Appeal BoardJul 24, 201310042371 (P.T.A.B. Jul. 24, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANDREW C. GILBERT ____________ Appeal 2012-002538 Application 10/042,371 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and NINA L. MEDLOCK, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-002538 Application 10/042,371 2 STATEMENT OF THE CASE Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 13 to 17, 21, 22, 25, 26, 28, 42 to 46, and 48 to 80. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Claim 14 is illustrative: 14. A method comprising the steps of: displaying a plurality of assets to a user via a first computing device; receiving from the user via the first computing device at least two selected assets from the plurality of assets, wherein at least a first and a second of the selected assets are different assets; purchasing the selected assets to form a dynamic security, wherein the user may trade the dynamic security as a whole, and/or may divide at least one asset from the dynamic security and trade the divided asset separately from the dynamic security; a second computing device: comparing a rate of return of at least one of the assets within the dynamic security to a pre-determined target rate of return; determining that the rate of return of the at least one asset deviates from the pre-determined target rate of return by at least the pre-determined amount, Appeal 2012-002538 Application 10/042,371 3 based at least in part on determining that the rate of return of the at least one asset deviates from the pre-determined target rate of return by at least the pre-determined amount, providing to the user via the first computing device a notification of the deviation. Appellant appeals the following rejection: Claims 13 to 17, 21, 22, 25, 26, 28, 42 to 46, and 48 to 80 under 35 U.S.C. § 103(a) as unpatentable over Pritchard (US 2002/0046154 A1; pub. Apr. 18, 2002) and Lipper (US 7,487,122 B2; iss. Feb. 3, 2009). ANALYSIS The Appellant argues that the cited references do not disclose “determining that the rate of return of the at least one asset deviates from the pre-determined target rate of return by at least a predetermined amount.” We agree. The Examiner relies on Lipper at column 6, lines 21 to 58 for teaching this subject matter (Ans. 5). We find that this portion of Lipper discloses a table which compares the returns of the stock Pharmacia relative to the pivot stock Amgen. The table displays security numbers in absolute values or ratios of Pharmacia relative to Amgen. Lipper does not disclose a target rate of return. Lipper does not determine if the rate of return of a security deviates from a predetermined target rate of return by at least a predetermined amount. In view of the foregoing, we will not sustain the Examiner’s rejection of claim 14 and claims 13, 15 to 17, and 48 to 51 dependent thereon. Appeal 2012-002538 Application 10/042,371 4 We will also not sustain this rejection as it is directed to the remaining claims because each of these claims includes the subject matter we have found lacking in the Lipper reference. DECISION The decision of the Examiner is reversed. REVERSED hh Copy with citationCopy as parenthetical citation