Ex Parte NASSIF et al

Patent Trial and Appeal Board

Jul 22, 2016

13484569 (P.T.A.B. Jul. 22, 2016)

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 ).
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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).
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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,
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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").
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Application 13/484,569
DECISION
The Examiner's rejections of claim 1-20 under 35 U.S.C. § 103(a) are
REVERSED.
REVERSED
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