Ex Parte NASSIF et alDownload PDFPatent Trial and Appeal BoardJul 22, 201613484569 (P.T.A.B. Jul. 22, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/484,569 05/31/2012 Nathan Joseph NASSIF 30636 7590 07/22/2016 FAY KAPLUN & MARCIN, LLP 150 BROADWAY, SUITE 702 NEW YORK, NY 10038 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. 40144/00502 6069 EXAMINER DASS, BARISH T ART UNIT PAPER NUMBER 3695 MAILDATE DELIVERY MODE 07/22/2016 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NATHAN JOSEPH NASSIF, MICHAEL MARKOV, MICHAEL CHIDLOVSKY, and ALEXEY P ANCHECKHA Appeal2014-004610 1 Application 13/484,5692 Technology Center 3600 Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and AMEE A. SHAH, Administrative Patent Judges. SHAH, Administrative Patent Judge. DECISION ON APPEAL The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision finally rejecting claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. 1 Throughout this opinion, we refer to the Appellants' Appeal Brief ("Appeal Br.," filed Oct. 11, 2013), Reply Brief ("Reply Br.," filed Feb. 24, 2014), and Specification ("Spec.," filed May 31, 2012), and the Examiner's Answer ("Ans.," mailed Dec. 23, 2013) and Final Office Action ("Final Act.," mailed May 15, 2013). 2 According to the Appellants, the real party in interest is Markov Processes International, LLC. Appeal Br. 2. Appeal2014-004610 Application 13/484,569 STATEMENT OF THE CASE The Appellants' invention "relates to systems and methods for quantifying similarities between various financial instruments. Specifically, the exemplary systems and methods described herein relate to measuring a degree of similarity between several financial instruments using a 'factor intersection' metric." Spec. 3, 11. 7-12. Claims 1, 13, and 16 are the independent claims on appeal. Independent claim 1 (Claims Appendix), reproduced below, is illustrative of the subject matter on appeal (with bracketing added for reference): 1. A method, comprising: [ (a)] selecting, by a processor of a computer device, a model for factor intersection calculation of a two or more of financial instruments, the model including a plurality of factors; [(b)] determining, by the processor, factor exposure values for first and second financial instruments on each of the factors; [( c )] determining, by the processor, a degree of similarity between the factor exposure values based on the selected model; and [ ( d)] generating, by the processor, a factor intersection result between the factor exposure values, wherein the factor intersection result includes the degree of similarity and at least one of an overlap amount and a non-overlap amount. REJECTIONS Claims 1--4, 13, and 16 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Stefek (US 7,024,388 B2, iss. Apr. 4, 2006), Gatto (US 2008/0114701 Al, pub. May 15, 2008), and Ingargiola (US 7 ,966,246 B2, iss. June 21, 2011 ). 2 Appeal2014-004610 Application 13/484,569 Claims 5 and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Stefek, Gatto, Ingargiola, and Rhee (US 7,536,332 B2, iss. May 19, 2009). Claims 6-12, 14, 15, 17, 19, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Stefek, Gatto, Ingargiola, and Sandretto (US 5,812,988, iss. Sept. 22, 1998). FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence. 3 ANALYSIS The Appellants contend, in relevant part, that the prior art does not disclose or suggest determining a degree of similarity, as recited in limitation ( c ), of independent claim 1, and similarly recited in independent claims 13 and 16. See Appeal Br. 4--9. Specifically, the Appellants argue that the combination of Stefek and Ingargiola, upon which the Examiner relies, does not teach determining a degree of similarity between the factor exposure values of first and second financial instruments based on the selected model. See id. at 4--7. The Appellants argue that the covariance matrix of Stefek is a measurement between two portfolios, does not include the exposure estimate, and does not compare factor exposure values of instruments. See id. at 6. The Appellants further argue that Ingargiola does 3 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 Appeal2014-004610 Application 13/484,569 not teach "a comparison between factor exposure values of a selected model" to determine a degree of similarity, contrary to the Examiner's finding. See id. at 6-7. After careful review of the Examiner's findings and reasoning as provided in the Final Action and Answer, we find the Examiner does not adequately show how the combination of Stefek and Ingargiola teaches the limitation of determining a degree of similarity between factor exposure values. The Examiner finds Stefek discloses "determining factor exposure values for first and second financial instruments on each of the factors" and "determining a proximity between the factor exposure values based on the selected model." Final Act. 3. The Examiner acknowledges that Stefek does not explicitly disclose "a degree of similarity." Id.; see also Ans. 15. However, the Examiner further finds that, from Stefek's Table 7, it would have been obvious to one of ordinary skill in the art to compare two set numbers, values, or of probability numbers (visually/mentally/logically) of exposures and observe degree of similarity between the two sets, as well as by computer logic operators. See (Table 21 Risk exposures factors: sensitivity). For example, comparing interest rate sensitivity of small portfolio and large portfolio (-0.32 and -0. 18 Japan or 32% versus 18%) or currency sensitivity (-0.12 or 12% versus -0.06 or 6%), etc. Ans. 9 (italics omitted). The Examiner's finding that it would have been obvious from Stefek to compare exposures to observe, i.e., determine, a degree of similarity between two values (see id.) is not supported by adequate evidence and reasoning how Stefek renders it obvious to determine a degree of similarity between factor exposure values. The Examiner cites to Ingargiola for teaching "degree of similarity." Final Act. 3--4; see also Ans. 15. The Examiner determines that "Ingargiola discloses sorting portfolios by degree of similarity based on portfolio factors, 4 Appeal2014-004610 Application 13/484,569 and it would be obvious to one [ ot] ordinary skill in the art to compare the degree of similarity of portfolios for profit, loss, etc." Ans. 18-19 (italics omitted). As with Stefek, the Examiner's finding that it would have been obvious from Ingargiola to compare, i.e., determine, the degrees of similarities of portfolios (see id.) is not supported by adequate evidence and reasoning how Ingargiola's sorting renders it obvious to determine a degree of similarity between factor exposure values or between portfolios. The Examiner also determines it would be obvious to combine the disclosures of Stefek and Ingargiola "to sort the securities and compute the degree of similarity between the securities holding of first and second portfolio and evaluating [sic] the performance of the portfolio configuration." Final Act. 4. However, it is not clear, and the Examiner does not explain, how Ingargiola's degree of similarity between portfolios would be combined with Stefek' s determination of factor exposure values to determine a degree of similarity between exposure factor values as required by the claims. Thus, we are persuaded that the Examiner erred in the rejection of independent claims 1, 13, and 16 under 35 U.S.C. § 103(a), and we do not sustain the rejection. We, therefore, also do not sustain the rejections of dependent claims 2-12, 14, 15, and 17-20. 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"). 5 Appeal2014-004610 Application 13/484,569 DECISION The Examiner's rejections of claim 1-20 under 35 U.S.C. § 103(a) are REVERSED. REVERSED 6 Copy with citationCopy as parenthetical citation