10672953 (P.T.A.B. Mar. 7, 2013)

Ex Parte Zhang et al

Patent Trial and Appeal BoardMar 7, 2013

10672953 (P.T.A.B. Mar. 7, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BIN ZHANG and KEMAL GULER ____________________ Appeal 2010-010879 Application 10/672,953 Technology Center 3600 ____________________ Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and MEREDITH C. PETRAVICK, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-010879 Application 10/672,953 2 STATEMENT OF CASE Bin Zhang and Kemal Guler (Appellants) seek our review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1-8, 10-15, and 17-19. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We REVERSE. THE INVENTION This invention is a determination of a bid value associated with a selected bidder (Spec. 1, para. [0002]). Claims 1 and 6, reproduced below, are illustrative of the subject matter on appeal. 1. A method, comprising: obtaining historical auction data; determining, with a computer from the historical auction data, a first parameter that is a function of both a joint bid distribution and a density function related to the joint bid distribution; selecting, with the computer, a bidder; obtaining, with the computer, a value distribution for the selected bidder; and solving, with the computer, an equation that includes the first pararneter and the selected bidder's value distribution, and not the value distribution of other bidders, to compute a bid value associated with the selected bidder for a given bid. 6. A system, comprising: a processor; and memory containing software executable by said processor; Appeal 2010-010879 Application 10/672,953 3 wherein, by executing said software, said processor computes a ratio of an estimate of a density function to an estimate of a joint bid distribution, permits a bidder to be selected, obtains a probability value distribution for the selected bidder, and solves an ordinary differential equation that includes the selected bidder's probability value distribution, and not the probability value distribution of other bidders, to compute a bid value associated with the selected bidder. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Makivic Messmer US 6,061,662 US 7,096,197 B2 May 9, 2000 Aug. 22, 2006 The following rejections are before us for review: Claims 1-5 are rejected under 35 U.S.C. § 101 as claiming ineligible subject matter. Claims 1-5 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement by introducing new matter. Claims 1, 2, 4-8, 10-15, and 17-19 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Messmer and Makivic.1 ISSUES The first issue is whether the amendment of claim 1 to include “a computer” introduces new matter. 1 Claims 3, 9, and 16 are noted as allowable if rewritten as independent claims reciting the limitations of the claims from which they depend. App. Br. 4, Ans. 2. Appeal 2010-010879 Application 10/672,953 4 The second issue is whether claims 1-5 recite patentable subject matter. The third issue is whether Makivic discloses determining a parameter that is a function of both a joint bid distribution and a density function. The fourth issue is whether Makivic discloses computing a ratio of an estimate of a density function to an estimate of a joint bid distribution. FINDINGS OF FACT We find that the following enumerated findings of fact (FF) are supported by at least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Office). 1. The Specification describes an exemplary “system 200 that implements the techniques described herein. As shown, the system 200 may include a processor 202 coupled to a memory 204, an input device 206, an output device 208 and a network interface.” (Spec. 6, para. [0019]). 2. Makivic discloses “representing an option price by a probability density calculated from the historical data ....” (Makivic, col. 25, ll. 22-23). 3. Makivic discloses using a Monte Carlo “simulation algorithm to derive an option price and at least one price sensitivity parameter ....” (Makivic, col. 25, ll. 11-13). ANALYSIS The rejection of claims 1-5 under 35 U.S.C. § 112, first paragraph, as introducing new matter Appeal 2010-010879 Application 10/672,953 5 We are persuaded that the Examiner erred by Appellants’ argument that Appellants “clearly had possession of the method of claims 1-5 being performed by a computer” because of the description in paragraph [0019] of the Specification. App. Br. 12. Our review of paragraph [0019] confirms that Appellants originally describe a method implemented on a processor coupled to memory. FF 1. Even though the term “computer” is not recited explicitly in the Specification, we find one of ordinary skill would recognize the described processor, memory, and other components of system 200 (FF 1) represent that which is commonly referred to as “a computer.” Identity of terminology is not required. In re Bond, 910 F.2d 831 (Fed. Cir. 1990). Therefore, the introduction of the broadly interpreted term “computer” in the claim did not represent new matter. For this reason, we reverse the rejection of claims 1-5 under 35 U.S.C. § 112, first paragaph. The rejection of claims 1-5 under 35 U.S.C. § 101 as ineligible subject matter We are persuaded that the Examiner erred by Appellants’ argument that claim 1-5 describe methods tied to a particular computer, which passes the machine-or-transformation test for patentable subject matter set forth in Bilski v. Kappos, 130 S.Ct. 3218, 3225 (2010). App. Br. 11. Claim 1 recites that the determining and solving steps are performed “with a computer.” We construe this to mean that a specially-programmed computer performs the determining and solving steps, which are not insignificant steps. By being tied to a particular machine, the claim recites a method which cannot be performed entirely through mental thought, and therefore does not recite Appeal 2010-010879 Application 10/672,953 6 only abstract ideas. For this reason, we reverse the rejection of claims 1-5 under 35 U.S.C. § 101. The rejection of claims 1, 2, 4, 5, 14, 15, 17, and 18 under §103(a) as being unpatentable over Messmer and Makivic Independent claim 1 recites “determining, with a computer from the historical auction data, a first parameter that is a function of both a joint bid distribution and a density function related to the joint bid distribution.” Independent claim 14 recites a substantially identical limitation. We are persuaded that the Examiner erred by Appellants’ argument that the combination of Messmer and Makivic does not disclose determining a “first parameter that is a function of both a joint bid distribution and a density function related to the joint bid distribution.” App. Br. 15. The Examiner cites to Makivic column 25, lines 21-25 as disclosing “form[ing] a probability density [function] in determining an option price” and lines 4-15 as disclosing “deriving a price sensitivity parameter and solving a simulation to compute an option price.” Ans. 6. The Examiner further reasons that “the probability density involves underlying parameter values in its determination.” Ans. 9-10. We find Makivic discloses, at column 25 lines 21-25, means for “representing an option price by a probability density calculated from the historical data.” FF 2. We find Makivic further discloses, at column 25 lines 4-15, a Monte Carlo “simulation algorithm to derive an option price and at least one price sensitivity parameter.” FF 3. Therefore, Makivic discloses using historical data to derive a density function and a price sensitivity parameter, which are used to determine an option price. Based on Appeal 2010-010879 Application 10/672,953 7 the Examiner’s reasoning, the claimed “first parameter” must be either the “price sensitivity parameter” or the “option price.” However, neither of these values is “a function of both a joint bid distribution and a density function related to the joint bid distribution,” as claimed, because Makivic does not disclose, at the cited portions of column 25, utilizing a “joint bid distribution” to determine either a price sensitivity parameter or an option price. The Examiner therefore has failed to establish a prima facie case of obviousness because the combination does not disclose the parameter that is a “function of ... a joint bid distribution” in the “determining” step. For this reason, we reverse the rejection under 35 U.S.C. § 103(a) of claims 1 and 14, as well as dependent claims 2, 4, 5, 15, 17, and 18. The rejection of claims 6-8, 10-13 and 19 under §103(a) as being unpatentable over Messmer and Makivic Independent claim 6 recites, in pertinent part, that a “processor computes a ratio of an estimate of a density function to an estimate of a joint bid distribution.” Independent claim 12 recites, in pertinent part, “means for determining a ratio of an estimate of a density function to an estimate of a joint bid distribution.”2 We construe each of these limitations to be substantially identical in that they require a ratio of a density function to a joint bid distribution.3 2 The Appeal Brief notes support for this portion of claim 12 is found in the Specification at lines 5 and 6 of paragraph [0017], which refers to the ratio of equation (7), also on page 5 of the Specification at paragraph [0015]. App. Br. 8. 3 The Specification defines the value, Ψ(b), calculated in equation (7) as a “parameter that can be defined in some embodiments as the ratio of a joint Appeal 2010-010879 Application 10/672,953 8 Claims 6 and 12 thus more narrowly require a “ratio” (rather than “a parameter” as in claim 1), based on a density function and a joint bid distribution. As with claim 1, however, the Examiner has not directed us to a section in Messmer or Makivic where a parameter is a function of a “joint bid distribution.” The cited sections of Messmer and Makivic also do not show the “joint bid distribution” as part of a computed “ratio,” so the Examiner has failed to establish a prima facie case of obviousness. For this reason, we reverse the rejection under 35 U.S.C. § 103(a) of claims 6 and 12, as well as dependent claims 7, 8, 10, 11, 13, and 19. DECISION The decision of the Examiner to reject claims 1-8, 10-15, and 17-19 is REVERSED. REVERSED mls bid distribution to a density function related to the joint bid distribution.” Spec. 4, para. [0012].