Ex Parte Johnson et alDownload PDFPatent Trial and Appeal BoardMar 15, 201613370492 (P.T.A.B. Mar. 15, 2016) Copy Citation 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. 2 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). 3 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 4 Copy with citationCopy as parenthetical citation