Ex Parte Lukose et al

Patent Trial and Appeal Board

Jul 18, 2016

12533864 (P.T.A.B. Jul. 18, 2016)

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).
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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
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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
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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.
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Application 12/533,864
DECISION
The Examiner's rejections of claims 1-20 under 35 U.S.C. § 103(a)
are reversed.
REVERSED
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