Ex Parte Lukose et alDownload PDFPatent Trial and Appeal BoardJul 18, 201612533864 (P.T.A.B. Jul. 18, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/533,864 07/31/2009 Rajan Lukose 56436 7590 07/20/2016 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 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. 82258130 8408 EXAMINER POLLOCK, GREGORY A ART UNIT PAPER NUMBER 3695 NOTIFICATION DATE DELIVERY MODE 07/20/2016 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): hpe.ip.mail@hpe.com mkraft@hpe.com chris.mania@hpe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAJAN LUKOSE, MARTIN B. SCHOLZ, and SHY AM S. RAJARAM Appeal2014-002610 1 Application 12/533,8642 Technology Center 3600 Before MICHAEL C. ASTORINO, NINA L. MEDLOCK, and MATTHEWS. MEYERS, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Our decision references Appellants' Appeal Brief ("App. Br.," filed June 18, 2013) and Reply Brief ("Reply Br.," filed December 10, 2013), and the Examiner's Answer ("Ans.," mailed October 11, 2013) and Final Office Action ("Final Act.," mailed March 26, 2013). 2 Appellants identify Hewlett-Packard Development Company, LP as the real party in interest. App. Br. 3. Appeal2014-002610 Application 12/533,864 CLAIMED fNVENTION Appellants' claimed invention relates to a method using linear programming to determine which securities are present in an existing portfolio (Title). Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A computer-implemented method, comprising: receiving, by a processor, a vector and a matrix, wherein said vector includes historical periodic returns of an existing portfolio and said matrix contains historical periodic returns of each security in a set of all possible securities comprising said portfolio; and computing, by said processor, a linear programming solution of a vector of weights of said securities comprising said existing portfolio, wherein said vector comprises a product of said matrix and said vector of weights, and wherein said linear programming solution is subject to a criterion that a sum of absolute values of said weights in said vector of weights is a minimum, and wherein the linear programming solution of the vector of weights specifies the constituent securities comprising the existing portfolio; and displaying or storing results of said computing. REJECTIONS Claims 1--4, 9, 15, and 16 are rejected under 35 U.S.C. § 103(a) as unpatentable over Robinson (US 6,484,152 Bl, iss. Nov. 19, 2002) and Choueifaty (US 2008/0222052 Al, pub. Sept. 11, 2008). Claims 5-7, 10-14, and 17-19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Robinson, Choueifaty, and Eder (US 2009/0313041 Al, pub. Dec. 17, 2009). 2 Appeal2014-002610 Application 12/533,864 Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable over Robinson, Choueifaty, and Weber (US 2004/0186803 Al, pub. Sept. 23, 2004). Claim 20 is rejected under 35 U.S.C. § 103(a) as unpatentable over Robinson, Choueifaty, Eder, and Weber. ANALYSIS Independent claim 1 and dependent claims 2-4 We are persuaded by Appellants' argument that the Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a) because neither Robinson nor Choueifaty discloses or suggests a method for determining which securities are present in an existing portfolio, i.e., "receiving ... a vector ... [that] includes historical periodic returns of an existing portfolio" and using the historical data to compute "a linear programming solution of a vector of weights of said securities comprising said existing portfolio, wherein ... the linear programming solution of the vector of weights specifies the constituent securities comprising the existing portfolio," as recited in claim 1 (App. Br. 12-13; see also Reply Br. 1-2). The Examiner cites Robinson as disclosing a method that receives historical data for an existing portfolio, and uses that data to determine the constituent securities in the portfolio (Final Act. 2-3). Yet Robinson, in fact, is directed to a completely different Automated Portfolio Selection ("APS") system and method for automatically selecting, from a plurality of candidate securities, the combination of securities, i.e., the securities portfolio, that best matches a given user's (i.e., an investor's) preferences 3 Appeal2014-002610 Application 12/533,864 and investment characteristics (see, e.g., Robinson, Fig. 3A; col. 1, 11. 19--31, 45---61; col. 5, 1. 37-col. 6, 1. 44; col. 7, 1. 30-col. 8, 1. 31). The Examiner asserts that Robinson, at column 2, line 55 through column 4, line 64, discloses "receiving ... a vector ... [that] includes historical periodic returns of an existing portfolio," as recited in claim 1 (Final Act. 2). However, that portion of Robinson merely describes various known databases from which data may be obtained regarding historical rates of return of individual securities. We agree with Appellants that this data may be akin to the claimed "historical periodic returns of each security in a set of all possible securities" comprising the existing portfolio of interest (App. Br. 12). But the data are not "historical periodic returns of an existing portfolio," as recited in claim 1. Responding to Appellants' argument that Robinson does not disclose "receiving ... historical periodic returns" of an existing portfolio, as claimed, because the portfolio in Robinson does not already exist, the Examiner references the "Example," beginning in Robinson at column 8, line 42, as disclosing an existing portfolio (Ans. 11 (citing Robinson, col. 8, 11. 42--45; col. 9, 11. 40--41)). But the Example merely discloses the use of the Robinson APS system to assist a user in modifying his/her existing portfolio by guiding the user through the APS optimum portfolio selection process. There is nothing in the Example that discloses or suggests "receiving ... historical periodic returns" of the existing portfolio and then using the historical data to compute "a linear programming solution of a vector of weights of said securities comprising said existing portfolio, wherein ... the linear programming solution of the vector of weights specifies the constituent securities comprising the existing portfolio," as 4 Appeal2014-002610 Application 12/533,864 recited in claim 1. Nor, for that matter, would there be any reason for computing any such solution; the securities that comprise the existing portfolio in the Example are already known. In view of the foregoing, we do not sustain the Examiner's rejection of independent claim 1under35 U.S.C. § 103(a). For the same reasons, we also do not sustain the rejection of dependent claims 2--4. Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are nonobvious if the independent claims from which they depend are nonobvious"). Independent claims 9 and 16, and dependent claim 15 Independent claims 9 and 16 include language substantially similar to the language of claim 1, and stand rejected based on the same rationale applied with respect to claim 1. Therefore, we do not sustain the Examiner's rejection under 35 U.S.C. § 103(a) of independent claims 9 and 16, and claim 15, which depends from claim 9, for the same reasons set forth above with respect to claim 1. Dependent claims 5-8, 10-14, and 17-20 Claims 5-8, 10-14, and 17-20 ultimately depend from independent claims 1, 9, and 16, respectively. None of the rejections of claims 5-8, 10- 14, and 17-20 based on Eder (claims 5-8, 10-14, and 17-20), Weber (claim 8), Eder and Weber (claim 20), in combination with Robinson and Choueifaty, cures the deficiencies in the Examiner's rejection of independent claims 1, 9, and 16. Therefore, we do not sustain the Examiner's rejections of claims 5-8, 10-14, and 17-20 under 35 U.S.C. § 103(a) for the same reasons set forth above with respect to the independent claims. 5 Appeal2014-002610 Application 12/533,864 DECISION The Examiner's rejections of claims 1-20 under 35 U.S.C. § 103(a) are reversed. REVERSED 6 Copy with citationCopy as parenthetical citation