Ex Parte Johnson et al

Patent Trial and Appeal Board

Mar 15, 2016

13370492 (P.T.A.B. Mar. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/370,492 02/10/2012
26161 7590 03/17/2016
FISH & RICHARDSON P.C. (BO)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
FIRST NAMED INVENTOR
Ian P. Johnson
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
08575-0129002 7518
EXAMINER
HOLLY, JOHN H
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
03/17/2016 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN P. JOHNSON, STUART EVAN FROSS,
RALPH JOSEPH WOLF, and BRIAN WALTERS
Appeal2014-003122
Application 13/370,492
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 37-53 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b). Oral arguments were
presented on March 3, 2016 by telephone.
SUMMARY OF THE DECISION
We REVERSE.
Appeal2014-003122
Application 13/370,492
THE INVENTION
The Appellants' claimed invention is directed to actively managed
funds and the group weights of financial assets (Spec. 1). Claim 37,
reproduced below, is representative of the subject matter on appeal.
37. A computer implemented method involving an exchange trade
fund (ETF), the method comprises:
receiving information about an actively managed fund and a
selected group of financial assets and a determined group of weights
for the group of financial assets, the weights being determined based
only on publicly available information of the actively managed fund
to provide a proxy basket;
determining by one or more computers an existence of a
relatively large spread in prices between a price of the ETF and the
value of the proxy basket, with the relatively large spread
being sufficient to allow a profit to occur on transactions involving the
ETF and the proxy basket; and
causing by the one or more computers transactions to occur
based on the determined existence of the relatively large spread.
THE REJECTION
The following rejection is before us for review:
Claims 37-53 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Gastineau (US 7,099,838 Bl, iss. Aug. 29, 2006 and Weber (US
8,170,935 B2, iss. May 1, 2012.
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Appeal2014-003122
Application 13/370,492
FTI'-JDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence1.
ANALYSIS
The Appellants argue that the rejection of claim 37 is improper
because the claim limitation for the financial assets to have "the weights
being determined based only on publicly available information of the
actively managed fund" is not shown in the prior art (App. Br. 9-11; Reply
Br. 2-5).
In contrast, the Examiner has determined that the cited claim
limitation above is disclosed by Gastineau at column 1, lines 37-55, column
6, lines 27-39, column 8, lines 1-12, and Figure 2 (Final Act. 2, 4, 5; Ans. 2,
3).
We agree with the Appellants. The argued claim limitation requires
that the group of weights of the financial assets has "the weights being
determined based only on publicly available information of the actively
managed fund." Support for this claim limitation is found in the
Specification, page 8. Here, the above citations to the prior art fail to
disclose this claim limitation. For instance, Gastineau at column 8, lines 1-
12 does disclose that a weighted portfolio is selected based on a factor
analysis, but it is not specifically disclosed that the source for this is done
with "the weights being determined based only on publicly available
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal2014-003122
Application 13/370,492
information of the actively managed fund" as the claim requires. In
Gastineau at column 8, lines 11-12 it is disclosed that the traders use
information to create a portfolio, but it is not disclosed that such is done with
the weights being determined based only on publicly available information
of the actively managed fund". As the cited claim limitation has not been
shown in the prior art, the rejection of claim 37 and its dependent claims is
not sustained. The remaining claims contain a similar limitation and the
rejection of these claims is not sustained for the same reasons given above.
CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 37-53 under 35 U.S.C. § 103(a) as unpatentable over
Gastineau and Weber.
DECISION
The Examiner's rejection of claims 37-53 is reversed.
REVERSED
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