Andrew Clark et al.

Patent Trials and Appeals Board

Sep 17, 2020

2020000690 (P.T.A.B. Sep. 17, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/776,110 07/11/2007 Andrew Clark REFD.P0035US/1001054013 6224
29053 7590 09/17/2020
NORTON ROSE FULBRIGHT US LLP
2200 ROSS AVENUE
SUITE 3600
DALLAS, TX 75201-7932
EXAMINER
PRESTON, JOHN O
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/17/2020 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):
doipdocket@nortonrosefulbright.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW CLARK and MARK LABOVITZ
Appeal 2020-000690
Application 11/776,110
Technology Center 3600

Before CAROLYN D. THOMAS, DAVID J. CUTITTA II, and
MICHAEL J. ENGLE, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 2, 5–16, 18–21, 24, 26–36, and 38–
50, all the claims pending in this application.2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Thomson Reuters
(GRC) LLC. Appeal Br. 1.
2 Claims 3, 4, 17, 22, 23, 25, and 37 are canceled. Final Act. 2.
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CLAIMED SUBJECT MATTER
Invention
Appellant’s invention relates generally to “creating an index based on
optimizing weightings of assets in a representative, meaningful subset of an
asset class.” Spec. ¶ 1.3
Exemplary Claim
Independent claim 1 is exemplary of the claims on appeal and is
reproduced below:
1. A computer-implemented method of operation for
a network server having one or more network interfaces
through which the network server connects to a network,
comprising:
(a) receiving, by the network server over the network
from a user, user-defined criteria;
(b) selecting, by the network server, a subset of assets
from an asset class by
(i) identifying, based on the user-defined criteria, a
plurality of assets that represent a behavior of the asset
class as a whole, and including said plurality of assets in
the subset of assets, wherein said plurality of assets is
fewer than the number of assets in the asset class; and
(ii) applying, based on the user-defined criteria,
one or more business rules to the plurality of assets to
remove one or more assets having unreliable historical
data from the subset of assets, wherein the subset of

3 We refer to: (1) the originally filed Specification filed July 11, 2007
(“Spec.”); (2) the Final Office Action mailed July 19, 2018 (“Final Act.”);
(3) the Appeal Brief filed February 6, 2019 (“Appeal Br.”); and (4) the
Examiner’s Answer mailed September 3, 2019 (“Ans.”).
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assets represents the behavior of the asset class as a
whole;
(c) determining, by the network server, optimal
investment weightings corresponding to each asset in said
subset of assets, for a plurality of risk levels;
(d) generating, by the network server, a plurality of
investment performance indices for the asset class, wherein
each of the plurality of investment performance indices
corresponds to a risk level of said plurality of risk levels; and
(e) communicating, by the network server over the
network to the user, an optimized investment portfolio for the
asset class based on the subset of assets and the optimal
investment weightings, and
wherein the optimal investment weightings
corresponding to each asset in said subset of assets are
calculated based on a database of historical market prices and
returns for each asset, and wherein each risk level of said
plurality of risk levels is represented by a different standard
deviation about an expected return of each of said investment
performance indices.
Appeal Br. 15 (Appendix A).
REFERENCES
The Examiner relies on the following prior art references:
Name Number / Title Date
Jones US 6,021,397 Feb. 1, 2000
Olsen US 2002/0123951 A1 Sept. 5, 2002
Michaud US 2004/0083150 A1 Apr. 29, 2004
Charnley US 2004/0111350 A1 June 10, 2004
Arnott US 2005/0171884 A1 Aug. 4, 2005
Kale US 7,050,998 B1 May 23, 2006
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REJECTIONS
The Examiner makes the following rejections:
Claims Statute Basis Final Act.
1, 2, 5–16, 18–21, 24,
26–36, 38–504
§ 101 Patent eligibility 4
1, 2, 5, 8–14, 16, 18–21,
24, 28–34, 36, 38–46,
48, 50
§ 103(a) Arnott, Michaud, Olsen 7
6, 27, 47 § 103(a) Arnott, Michaud, Olsen, Kale 19
7, 26 § 103(a) Arnott, Michaud, Olsen, Charnley 20
15, 35 § 103(a) Arnott, Michaud, Olsen, Jones 21
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of Appellant’s arguments and evidence.
Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).

I. Rejection Under 35 U.S.C. § 101
Appellant appeals the Examiner’s rejection of claims 1, 2, 5–16, 18–
21, 24, 26–36, and 38–50 as ineligible subject matter under § 101. Appeal
Br. 5–12. Appellant’s arguments address limitations recited in claim 1 but
do not address any particular limitation recited in any other claim. Id. at 9–
10. As such, we select independent claim 1 as representative of all claims
rejected under § 101 in this appeal. See 37 C.F.R. § 41.37(c)(1)(iv) (2018).

4 Appellant has not included claim 50 in the claims appendix, Appendix A.
Appeal Br. 21. But that claim is pending and rejected by the Examiner.
Appeal Br. 6–7.
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An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has held that § 101 includes implicit
exceptions—laws of nature, natural phenomena, and abstract ideas—which
are not patent-eligible. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014). In January 2019, the Office issued the 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”),
which addresses the manner in which § 101 case law is to be applied by the
Office. In October 2019, the Office issued an update to explain further the
manner in which the Guidance should be implemented. See October 2019
Patent Eligibility Guidance Update, 84 Fed. Reg. 55,942 (Oct. 18, 2019);
October 2019 Update: Subject Matter Eligibility, available at
https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (“Guidance Update”). The Board is required to
adhere to these guidance documents as a matter of Office policy. Guidance
51.5 The Guidance sets forth a four-part analysis for determining whether a
claim is eligible subject matter under § 101; the four parts are labeled here as
Step 1, Step 2A Prong 1, Step 2A Prong 2, and Step 2B. Id. at 53–56.
Guidance Step 1
First, under “Step 1,” we consider whether the claimed subject matter
falls within the four statutory categories set forth in § 101, namely
“[p]rocess, machine, manufacture, or composition of matter.” Guidance 53–
54; see 35 U.S.C. § 101. Appellant’s independent claim 1 recites a

5 Although the Office Action at issue was mailed before the 2019 Guidance
was issued, the 2019 Guidance “applies to all applications . . . filed before,
on, or after January 7, 2019.” Guidance 50.
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computer-implemented method (i.e., a “process”) and independent claim 20
recites tangible computer readable media (i.e., a “manufacture”). As such,
the claims are directed to a statutory class of invention within § 101 and we
proceed to the next step.
Guidance Step 2A Prong 1 (Judicial Exceptions)
Second, under “Step 2A Prong 1,” we evaluate “whether the claim
recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural
phenomenon.” Guidance 54; see Alice, 573 U.S. at 216–17.
The Examiner determines that claim 1 recites and is directed to a
judicial exception—specifically, an abstract idea. Final Act. 3; Ans. 3–4.
According to the Examiner, claim 1 is “directed to the abstract idea of
formulating an investment performance index from an asset class.” Final
Act. 4. The Examiner determines “[t]he concept described in claim 1 is not
meaningfully different than those mathematical relationships/formulas found
by the courts to be abstract ideas.” Ans. 4.
Appellant, in turn, does not specifically rebut the Examiner’s
determination that claim 1 recites an abstract idea. Appeal Br. 5–12.
We agree with the Examiner’s determination that claim 1 recites an
abstract idea. Apart from additional elements discussed separately below,
claim 1, under a broadest reasonable interpretation, recites steps focused on
mitigating investment risk by “formulating an investment performance index
from an asset class” (Final Act. 4), which is a fundamental economic activity
and a long-practiced human activity. Guidance 52 (indicating as abstract
“[c]ertain methods of organizing human activity” such as “fundamental
economic principles or practices (including hedging [and] . . . mitigating
risk)”). More specifically, the invention in claim 1 seeks to mitigate
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unnecessary risk by increasing portfolio efficiency to achieve “a higher
expected return for a given measure of risk.” Spec. ¶ 7.
In particular, limitation (a) involves receiving user-defined criteria
from a user. Limitation (b) involves selecting a subset of assets from an
asset class. Limitation (c) involves determining optimal investment
weightings corresponding to each asset in the subset of assets, for a plurality
of risk levels. Limitation (d) involves generating a plurality of investment
performance indices corresponding to a risk level for the asset class and
limitation (e) involves communicating an optimized investment portfolio for
the asset class based on the subset of assets and the optimal investment
weighting. Receiving user preferences including a user risk tolerance and
determining an optimized investment portfolio for a subset of an asset class
based on the user risk tolerance, have long been common steps in mitigating
unnecessary investment risk to maximize investment returns. As a result,
these steps may be categorized as a fundamental economic practice, which,
as set forth in the Guidance, is a certain method of organizing human
activity. Guidance 52.
Claim 1 also recites a mental process because it includes steps of
collecting asset-related data, analyzing the data, and communicating certain
results of the collection and analysis, all of which can be performed entirely
in the human mind, or with the aid of a pen and paper. According to the
Guidance Update, when recited at a high level of generality, collecting,
analyzing, and communicating information “recite a mental process when
[the claim] contain[s] limitations that can practically be performed in the
human mind” or with the aid of “pen and paper.” Guidance Update 7, 9.
Such mental processes are a category of abstract idea. Id. at 2. As discussed
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above, limitations (a) and (e) involve collecting and communicating
information. Limitation (a) collects user-defined criteria. Limitation (e)
involves communicating analyzed data in the form of an optimized
investment plan. Limitation (b) analyzes data. Specifically, limitation (b)
involves selecting a subset of assets from an asset class by (i) identifying,
based on the user-defined criteria, assets that represent a behavior of the
asset class as a whole, and including the identified assets in the subset of
assets, and (ii) applying, based on the user-defined criteria, one or more
business rules to the assets to remove one or more assets having unreliable
historical data from the subset of assets. Under a broadest reasonable
interpretation, limitation (b) merely requires selecting a subset of assets from
an asset class by (i) identifying, based on the user-defined criteria, assets that
represent a behavior of the asset class as a whole. Appellant’s Specification
informs that the selected subset may include “less than about 20” assets.
Spec. ¶ 31. Furthermore, a representative subset for the class of assets may
be selected by applying business rules that include straight-forward financial
factors:
The selection methodology used to select, screen, or winnow the
assets in an asset class into a workable number of assets which
fairly represent, or can account for the vast majority of, the
behavior of the class, may also comprise evaluating one or more
financial factors. . . . These financial factors may be any of a
number of objective criteria which can be easily compared
between two assets and allow for a rational choice.
Representative financial factors are market capitalization,
liquidity, expense ratio, correlation with the underlying index, or
combinations of these factors.
Spec. ¶ 16.
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A person could select a subset of 20 or less assets based on a business
rule mentally or with pencil and paper without analyzing a large amount of
data and therefore this limitation can be practically performed in the mind or
with pen and paper. For example, a user could select a subset of assets
having less than a threshold market capitalization from the asset class. Id.
We, therefore, determine that claim 1 recites a mental process because
“nothing in the claim element[s] precludes the step[s] from practically being
performed in the mind or by a human analog.” See Guidance Update 7
(indicating that “a claim to ‘collecting information, analyzing it, and
displaying certain results of the collection and analysis,’ where the data
analysis steps are recited at a high level of generality such that they could
practically be performed in the human mind, recites a mental process,” citing
Elec. Power Grp., LLC v. Alston, S.A., 830 F.3d 1350, 1356 (Fed. Cir.
2016)).
We also agree with the Examiner that claim 1 recites an abstract idea
in the form of “mathematical concepts” as set forth in the Guidance. Final
Act. 5. Limitation (c) recites “determining . . . optimal investment
weightings corresponding to each asset in said subset of assets, for a
plurality of risk levels” and the “wherein” clauses add that “the optimal
investment weightings corresponding to each asset in said subset of assets
are calculated based on a database of historical market prices and returns for
each asset” and “each risk level of said plurality of risk levels is represented
by a different standard deviation about an expected return of each of said
investment performance indices.” Such “calculated” determinations using
methods such as “standard deviation” are mathematical concepts, which the
Guidance identifies as abstract ideas (Guidance 52). The Specification
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further supports this determination as it explains these calculations are
“based on daily price and/or return data for the six-month period preceding
the determination of the index value” via “mean-variance optimization.”
Spec. ¶¶ 43, 71. Further, the Specification states “[i]n particular, the MVO
algorithm taken from the fPortfolio library of the R computer program
language was used to compute the weightings corresponding to the tangency
or Sharpe portfolio for the selected assets, subject to the constraint that short
positions in any asset were excluded.” Spec. ¶ 71. Consequently, we agree
with the Examiner that claim 1 recites at least one abstract idea in the form
of a “mathematical concept” as provided in the Guidance.
In summary, claim 1 recites an abstract idea in the form of a “certain
method of organizing human activity,” a “mental process,” and a
“mathematical concept,” as set forth in the Guidance. We note that whether
claim 1 recites plural abstract ideas versus one abstract idea does not affect
the inquiry of whether the claim is directed to patent-eligible subject matter.
As our reviewing court has held, combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to
another abstract idea . . . does not render the claim non-abstract.”); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016) (patent-ineligible claims were directed to a combination of abstract
ideas).
Thus, we agree with the Examiner that claim 1 recites at least one
abstract idea under the Guidance, and we discern no error in that part of the
Examiner’s rejection.

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Guidance Step 2A Prong 2 (Practical Application)
Third, having determined that claim 1 recites an abstract idea, we
evaluate whether “the claim as a whole integrates the recited judicial
exception into a practical application of the exception.” Guidance 54. “A
claim that integrates a judicial exception into a practical application will
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Id.; see
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78
(2012). The Guidance specifies that this evaluation is conducted by first
“[i]dentifying whether there are any additional elements recited in the claim
beyond the judicial exception(s),” and then “evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.” Guidance 54–55.
The Examiner finds claim 1 recites additional elements including
network interfaces, a network, and a network server. Ans. 4. The Examiner
determines the additional elements do not integrate the exception into a
practical application because the additional elements are generic computer
components “recited at a high level of generality and are recited as
performing generic computer functions routinely used in computer
applications and the internet.” Id.
Appellant argues that claim 1 is similar to the claims at issue in
McRO6 because the claimed “systems may be programmed to utilize specific
rules to limit the number of assets selected to represent the behavior of the

6 Citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313
(Fed. Cir. 2016).
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asset class as a whole to be less than 25% of the asset class as a whole.”
Appeal Br. 10. Therefore, claim 1 “is directed to an improvement to
conventional index formulation systems-automating and improving how
computer systems select class-representative assets for a performance
index.” Id.
This argument is unpersuasive. In McRO, the court reviewed claims
that use “a combined order of specific rules that renders information into a
specific format that is then used and applied to create desired results:
a sequence of synchronized, animated characters.” McRO, 837 F.3d at 1315.
The court found that the claims did not “simply use a computer as a tool to
automate conventional activity,” but instead used the computer to “perform a
distinct process” that is carried out in a different way than the prior non-
computer method to improve the technology of (3-D animation techniques).
See McRO, 837 F.3d at 1314–16.
In contrast with McRO, Appellant does not identify any specific rules
in the claim that are used to solve a technological problem, let alone identify
specific rules that act in the same way as the rules enabling the computer in
McRO to generate computer animated characters.
We, therefore, find insufficient basis on the record before us to
support Appellant’s argument that claim 1 is similar to the claim in McRO,
where computers were unable to make certain subjective determinations, i.e.,
regarding morph weight and phoneme timings, which could only be made
prior to the McRO invention by human animators. As such, we are not
persuaded by Appellant’s argument that the claim improves a computer
technology or other technology, and we do not consider claim 1 to recite a
practical application of the abstract concept in view of McRO.
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Even assuming the claimed invention results in the improvement
Appellant asserts, i.e., improving how computer systems select class-
representative assets for a performance index (Appeal Br. 10), that
improvement is an improvement to the abstract idea discussed above. Thus,
Appellant’s argument improperly relies on the abstract idea to provide
significantly more than the abstract idea itself. Even if the claimed abstract
idea were novel, the novelty of the abstract idea is not enough to save it from
ineligibility. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract
idea.”). Rather than improving computer technology, the claim uses the
computer as a tool to implement the improved abstract idea. In fact,
Appellant points out that the claimed index formulation method is
implemented on a “generic computing device” and that it is the algorithm
that “maximize[s] a given investor utility function.” Spec. ¶¶ 62, 58. Using
a computer as a tool to perform an improved algorithm does not integrate the
judicial exception into a practical application or otherwise confer patent-
eligibility. Guidance 55.
In summary, Appellant fails to identify any way in which an
additional limitation (rather than the abstract idea), whether alone or in
combination, reflects an improvement in any technical field, requires a
particular machine integral to the claim, transforms the article to a different
state, or otherwise applies the judicial exception in some meaningful way
beyond generally linking the use of the judicial exception to a particular
technological environment (e.g., authentication). Guidance 55. We,
therefore, determine claim 1 does not integrate the abstract idea into a
practical application and thus is directed to a judicial exception.
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Guidance Step 2B (Inventive Concept)
Finally, having concluded that claim 1 is “directed to” an abstract
idea, we turn to whether the claim provides an “inventive concept,” i.e.,
whether the additional elements, individually and as an ordered combination,
amount to “significantly more” than the exceptions themselves. Guidance
56. To determine whether the claim provides an inventive concept, the
additional elements are considered—individually and in combination—to
determine whether they (1) add a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional” in the field or
(2) simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Guidance 56.
The Examiner determines that “taken alone, the additional elements
do not amount to significantly more than the above-identified judicial
exception (the abstract idea).” Final Act. 6. Specifically, the Examiner
notes that the “network elements are recited at a high level of generality and
are recited as performing generic computer functions” and that “[g]eneric
computer components recited as performing generic computer functions that
are well-understood, routine and conventional activities amount to no more
than implementing the abstract idea with a computerized system.” Id. at 6–
7. Additionally, the Examiner determines that “[l]ooking at the limitations
as an ordered combination adds nothing that is not already present when
looking at the elements taken individually.” Id. at 6.
Appellant argues that claim 1 is “patent eligible under Step 2B”
because the claim sets “forth a selection methodology involving user-based
criteria and business rules that circumvents the technical limitations of
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conventional index formulations systems and ‘reduces the number of assets
in the asset class to a selected, manageable subset of assets.” Appeal Br. 11–
12.
This argument is not persuasive. Appellant fails to identify any
additional elements in the claim, let alone provide evidence that a specific
element beyond the judicial exception is not well-understood, routine, or
conventional. Likewise, Appellant provides no evidence from the
Specification that the claimed combination of additional elements is non-
conventional. Mere attorney arguments and conclusory statements
unsupported by factual evidence are entitled to little probative value. In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). As discussed above, the only
“additional elements” in claim 1 beyond the recited abstract idea are a
network server, network interface, and a network. And these elements are
merely used for performing each step of the claimed abstract process. Claim
1 uses generic computer components for collecting and analyzing data and
for communicating that data to implement the abstract idea. E.g., Spec. ¶ 62
(“Computer 701 represents a generic computing device, e.g., a desktop
computer, laptop computer, notebook computer, network server”;
“Computer 701 may include . . . network interface(s) 709 (e.g., Ethernet,
wireless network interface, modem, etc.) through which computer 701
connects to a network (e.g., Internet, LAN, WAN, PAN, etc.”). “We have
repeatedly held that such invocations of computers and networks that are not
even arguably inventive are insufficient to pass the test of an inventive
concept in the application of an abstract idea.” Elec. Power, 830 F.3d at
1355 (quotation omitted); see also Mortg. Grader, Inc. v. First Choice Loan
Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (“[G]eneric computer
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components such as an ‘interface,’ ‘network,’ and ‘database’ . . . . do not
satisfy the inventive concept requirement.”).
We, therefore, agree with the Examiner’s determination that claim 1
does “not include additional elements that are sufficient to amount to
significantly more than the judicial exception.” Final Act. 4. The recited
hardware adds nothing more than well-understood, routine, conventional
activities, specified at a high level of generality, to the abstract mental
process. See MPEP § 2106.05(d)(II)(ii). We conclude that claim 1 does not
set forth an inventive concept because the additional elements recited in the
claim do not provide significantly more than the recited judicial exception,
whether the claim elements are considered individually or as an ordered
combination.
Accordingly, we are not persuaded that claim 1 recites patent-eligible
subject matter and we sustain the rejection of claims 1, 2, 5–16, 18–21, 24,
26–36, and 38–50 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter.

II. Rejections Under 35 U.S.C. § 103(a)
The Examiner relies on the combined teachings of Arnott, Michaud,
and Olsen to teach or suggest all of the limitations of claim 1. Final Act. 7–
9. The Examiner determines that sufficient motivation existed to combine
the teachings of the references. Id. at 8–9.
Appellant argues that the Examiner’s reliance on the combined
teachings of the references would render Arnott unsatisfactory for its
intended purpose. Appeal Br. 13 (citing In re Gordon, 733 F.2d 900 (Fed.
Cir. 1984)).
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According to Appellant:
The intended purpose of Arnott is to provide a non-capitalization
weighted indexing system, for which “[s]pecifically excluded are
widely-used capitalization weighted indexes and price-weighted
indexes, in which the price of a security contributes in a
substantial way to the calculation of the weight of that security
in the index or the portfolio,” and “[v]aluation indifferent indexes
of the present invention avoid overexposure to overvalued
securities and underexposure to undervalued securities, as
compared with conventional capitalization-weighted and price-
weighted.”
Id. (citing Arnott title, abstract, summary, claims).
Appellant further argues “one skilled in the art would not modify
Arnott in view of any reference to include, ‘the optimal investment
weightings corresponding to each asset in said subset of assets are calculated
based on a database of historical market prices and returns for each asset,’ as
claimed” because “[t]he proposed modification of Arnott would
impermissibly render Arnott unsuitable for its intended purpose.” Appeal
Br. 13 (emphasis omitted).
Appellant’s arguments are not supported by evidence found in the
record and are, instead, supported only by attorney argument which “cannot
take the place of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974). Appellant does not provide evidence that supports the allegation that
Arnott’s intended purpose “is to provide a non-capitalization weighted
indexing system,” as specified by Appellant. Furthermore, even assuming
the intended purpose of Arnott, as alleged by Appellant, is accurate,
Appellant does not provide evidence to establish that “modify[ing] Arnott in
view of any reference to include, ‘the optimal investment weightings
corresponding to each asset in said subset of assets are calculated based on a
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database of historical market prices and returns for each asset,’ as claimed,”
would impermissibly render Arnott unsuitable for its intended purpose.
Appeal Br. 13. Instead, Appellant merely reaches this conclusion without
providing factual support or sufficient reasoning. Id.
As a result, Appellant fails to demonstrate why the constraints of In re
Gordon apply to Appellant’s method of creating an index based on
optimizing weightings of assets. See Gordon, 733 F.2d at 900.
For the reasons discussed, Appellant has not persuaded us of error in
the Examiner’s obviousness rejection of independent claim 1. Accordingly,
we sustain the Examiner’s rejection of that claim, as well as the rejection of
independent claim 20, and dependent claims 2, 5–16, 18, 19, 21, 24, 26–36,
and 38–50, which Appellant does not argue separately with particularity.
Appeal Br. 13–14.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
References/
Basis
Affirmed Reversed
1, 2, 5–16,
18–21, 24,
26–36, 38–50
101 Patent eligibility 1, 2, 5–16,
18–21, 24,
26–36, 38–50

1, 2, 5, 8–14,
16, 18–21, 24,
28–34, 36,
38–46, 48, 50
103(a) Arnott, Michaud,
Olsen
1, 2, 5, 8–14,
16, 18–21,
24, 28–34,
36, 38–46,
48, 50

6, 27, 47 103(a) Arnott, Michaud,
Olsen, Kale
6, 27, 47
7, 26 103(a) Arnott, Michaud,
Olsen, Charnley
7, 26
Appeal 2020-000690
Application 11/776,110

19
15, 35 103(a) Arnott, Michaud,
Olsen, Jones
15, 35
Overall
Outcome
1, 2, 5–16,
18–21, 24,
26–36, 38–50

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED