Ex Parte 6122635 et al

Board of Patent Appeals and Interferences

Aug 30, 2012

90008973 (B.P.A.I. Aug. 30, 2012)

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.
90/008,973 12/21/2007 6122635 1722.028F 2567
32361 7590 08/30/2012
GREENBERG TRAURIG (NY)
MET LIFE BUILDING
200 PARK AVENUE
NEW YORK, NY 10166
EXAMINER
WEAVER, SCOTT LOUIS
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
08/30/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NewRiver, Inc.
____________

Appeal 2011-006635
Reexamination Control No. 90/00,8973
United States Patent 6,122,235
Technology Center 3900
____________

Before JAMESON LEE, ALLEN R. MacDONALD, and SCOTT R.
BOALICK, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant, NewRiver, Inc. (“NewRiver”), the real party in interest and
patent owner, appeals under 35 U.S.C. §§ 134(b) and 306 from a final
rejection of claims 1-45, 51-71, 77-88, and 92. We have jurisdiction under
35 U.S.C. §§ 134(b) and 306. Oral hearing was held on July 20, 2011.
Rejected claims 46-50, 72-76, and 89-91 were cancelled by Appellant
subsequent to the final rejection.
We AFFIRM-IN-PART.
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STATEMENT OF THE CASE
This proceeding arose from a third party request, filed December 21,
2007, for ex parte reexamination of United States Patent 6,122,635
(“NewRiver Patent”), titled “Mapping Compliance Information Into Useable
Format.” which was issued on September 19, 2000.
The Invention
The invention relates to electronic preparation and delivery of
compliance information for securities. The term “compliance information”
is defined in Appellant’s specification (Col. 2:52-60) as follows:
As used herein, compliance information is a subset of
securities information. Compliance information is certain
information about a security that a government or a stock
exchange requires be made available or delivered to an investor
in that security. For example, the United States Securities and
Exchange Commission (“SEC”) and the National Association
of Securities Dealers (“NASD”) each require filing of certain
information by an issuer of securities, this is an example of
securities information. The SEC and NASD require that a
certain subset of the securities information be made
available to an investor in a security – this is compliance
information . . . . An example of compliance information is a
mutual fund prospectus. (Emphasis added.)

Appellant’s specification, in the Background Information section,
more clearly explains the backdrop of the requirement to make compliance
information available to an investor in a security. It is explained that
government agencies and securities exchanges require that certain
information be made available to an investor “before a security is sold,”
and that certain information be delivered to an investor with the
confirmation of any transaction. (NewRiver Patent Col.1:15-19).
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Thus, the field of Appellant’s invention is securities compliance
information preparation and delivery, electronically via a computer to
support online purchase of securities such as a mutual fund.
The specific invention is directed to acquiring securities information
from one or more database sources, extracting compliance information from
the acquired securities information that is related to a particular security, and
providing access to the extracted compliance information. (NewRiver
Patent Abstract.)
The independent claims are claims 1, 9, 13, 19, 26, and 29. Of those,
claims 1, 9, 19, 26, and 29 specify the compliance information as mutual
fund compliance information.
Claims 1 and 9 read as follows:
1. A computer-assisted method for manipulating
securities information, comprising:

acquiring securities information from one or more
database sources;

identifying at least one portion in each of at least two
documents in the acquired securities information as compliance
information for a particular mutual fund; and

creating a computer-readable file from the identified
portions wherein the computer-readable file comprises
compliance information for the particular mutual fund.

9. A system for providing access to mutual fund
compliance information, comprising:

an obtainment subsystem for acquiring securities
information from one or more database sources and for
extracting compliance information from at least two documents
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each comprising compliance information for a particular mutual
fund; and

an accessing subsystem for providing access to extracted
compliance information for at least two mutual funds offered to
investors by different fund issuers over a computer
communications link.

The Prior Art
The Examiner relied upon the following prior art references in support
of twenty different obviousness rejections as applied to seventy-nine claims
six of which are independent claims (claims 1, 9, 13, 19, 26, and 29):
1. Applicant’s Admitted Prior Art (“APA”) from the Specification;
2. International Financial Network (“IFN”) EdgarWatch,
http://web.archive.org/web/1997021400123/http://www.ifn.com;
3. LookSmart, “International Financial Network announces 3-year
agreement with Smith Barney,” (“LookSmart Article”);
http://findarticles.com/p/articles/mi_m0EIN/is_1997_Fed_12/ai_1...
4. NYU Filing Retrieval Toolkit (“NYU”);
http://web.archive.org/web/19981203074125/http://edgar.ster...;
5. Eric Jones, “WORD PERFECT 5.1 MINI-MANUAL,” University of
Massachusetts (1991), http://www.empowermentzone.com/wp51. mini.txt
(“Word Perfect 5.1 Mini Manual”);
6. U.S. Patent 5,893,079 (“Cwenar”), granted April 6, 1999;
7. International Validation Forum, “Validation Compliance Annual
1995,” ISBN 0824794591, 1995, page 635, Google Book Search,
http://books.google.com/books?... (“Validation Book”);
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8. Ferguson D. “Parsing Financial Statements Efficiently and Accurately
Using C and Prolog,” Proceedings of the Fifth International Conference on
the Practical Application of Prolog, Proceedings FO PAP97. Practical
Application of Prolog. Fifth International Conference, London, UK, April
22-24, 1997, pp. 157-167. (“EDGARSCAN”).
The Rejections on Appeal
Claims 51, 52, 66-71, 77, 82, 83, and 92 were rejected by the
Examiner as unpatentable for improper broadening under 35 U.S.C. § 305.
Claims 63, 67-71, and 83 were rejected by the Examiner as
unpatentable for indefiniteness under 35 U.S.C. § 112, second paragraph.
Claims 1-4, 8, 9, 26, 27, 31-40, 42, 44, and 51-57, 59-66, and 78-83
were rejected by the Examiner under 35 U.S.C. § 103 as unpatentable over
IFN in view of APA.
Claim 43 was rejected by the Examiner under 35 U.S.C. § 103 as
unpatentable over IFN, APA, and EDGARSCAN.
Claims 5, 41, and 45 were rejected by the Examiner under 35 U.S.C.
§ 103 as unpatentable over IFN, APA, and NYU.
Claim 6 was rejected by the Examiner under 35 U.S.C. § 103 as
unpatentable over IFN, APA, NYU, and Cwenar.
Claim 7 was rejected by the Examiner under 35 U.S.C. § 103 as
unpatentable over IFN, APA, NYU, Cwenar, and an example SEC filing.
Claim 58 was rejected by the Examiner under 35 U.S.C. § 103 as
unpatentable over IFN, APA, and the Validation Book.
Claims 10 and 12 were rejected by the Examiner under 35 U.S.C.
§ 103 as unpatentable over IFN, APA, and the LookSmart Article.
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Claim 11 was rejected by the Examiner under 35 U.S.C. § 103 as
unpatentable over IFN, APA, the LookSmart Article, and the Validation
Book.
Claims 13, 14, 17, 67, 68, 69, and 71 were rejected by the Examiner
under 35 U.S.C. § 103 as unpatentable over IFN and Word Perfect 5.1
Mini Manual.
Claim 70 was rejected by the Examiner under 35 U.S.C. § 103 as
unpatentable over IFN, Word Perfect 5.1 Mini Manual, and
EDGARSCAN.
Claims 15 and 16 were rejected by the Examiner under 35 U.S.C.
§ 103 as unpatentable over IFN, APA, and Word Perfect 5.1 Mini
Manual.
Claim 18 was rejected by the Examiner under 35 U.S.C. § 103 as
unpatentable over IFN, Word Perfect 5.1 Mini Manual, and the
Validation Book.
Claims 19, 20, 23, 24, 32, 35, and 77 were rejected by the Examiner
under 35 U.S.C. § 103 as unpatentable over IFN and Word Perfect 5.1
Mini Manual.
Claims 21 and 22 were rejected by the Examiner under 35 U.S.C.
§ 103 as unpatentable over IFN, APA, and Word Perfect 5.1 Mini
Manual.
Claim 25 was rejected by the Examiner under 35 U.S.C. § 103 as
unpatentable over IFN, Word Perfect 5.1 Mini Manual, and the
Validation Book.
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Claim 84 was rejected by the Examiner under 35 U.S.C. § 103 as
unpatentable over IFN, APA, and EDGARSCAN.
Claim 28 was rejected by the Examiner under 35 U.S.C. § 103 as
unpatentable over IFN, APA, and NYU.
Claims 29, 32, 35, 85-88, and 92 were rejected by the Examiner under
35 U.S.C. § 103 as unpatentable over NYU and APA.
Claim 30 was rejected by the Examiner under 35 U.S.C. § 103 as
unpatentable over IFN, APA, and NYU.
ANALYSIS
The term “compliance information” is defined in Appellant’s
specification (Spec. 2:52-60) as a subset of all the securities information
about a security, which a government agency or stock exchange requires to
be made available or delivered to an investor in that security before that
security is sold to the investor. The record does not contain any indication
that that meaning of “compliance information” is different from how the
term would have been understood by one with ordinary skill as a well-
established term of art in the securities field. Appellant does not contend
that it has coined a brand new term or dispute that “compliance information”
was already a term of art in the securities field at the time of the invention.
Historically, the delivery of paper compliance information to an
investor was in person or via document delivery services such as the U.S.
Mail, Federal Express, or United Parcel Service. (NewRiver Patent
Col.1:19-22). At the time of Appellant’s invention, the Securities Exchange
Commission had “recently” changed its rules and regulations to allow
electronic delivery of compliance information of mutual funds and other
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non-corporate securities. (Fein Declaration ¶ 2). Also at the time of
Appellant’s invention, the need to develop a system to enable the electronic
delivery of accurate compliance information online was well-recognized in
the marketplace and multiple entities in the marketplace were attempting
such development. (Fein declaration ¶ 6).
Based on the foregoing, we find that the hypothetical person having
ordinary skill in the art possesses not only computer information processing
and retrieval skills but also an understanding of what constitutes compliance
information for securities and how compliance information were
traditionally assembled and disseminated in paper form prior to the use of
computers to store, process, and deliver compliance information. In reality,
there may be no actual individual who alone possesses sufficient knowledge
on both computer systems and on practices in the securities industry, and a
securities professional may have to consult with a computer professional,
and vice versa. Obviousness is determined on the basis of a hypothetical
person presumed by law to possess knowledge of all the applicable prior art.
Admitted Prior Art
The Admitted Prior Art (“APA”) centers about the use of “stickers” to
supplement a previously provided paper document providing compliance
information to an investor. “Stickers” were useful when compliance
information already printed in a document which has been disseminated has
to be updated and the securities company or securities professional desires to
just indicate the change with respect to the previously provided compliance
information rather than print an entire new document containing the up-to-
date compliance information.
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During oral argument on July 20, 2011, we questioned Appellant’s
counsel on the prior use of “stickers” admittedly known to one with ordinary
skill art. Counsel for the Appellant clarified many points in that regard. We
first identify two characteristics of previously-known and widely used
“stickers” which were confirmed by Appellant’s counsel at oral argument:
A. A “sticker” is a supplemental document which
includes new compliance information which was not included
in an already disseminated first document such as a prospectus
and which refers to the first document with instructions
indicating what compliance information in the first document is
now obsolete and what new compliance information is now
contained in the supplement. (Transcript 10:1-3 and 11:13-25).
B. The “sticker” as a supplemental document is
normally prepared by collecting new compliance information
from multiple documents each containing compliance
information for a security and presenting that collection in a
single document, the sticker. (Transcript 9:12 to 10:20).

Based on counsel’s representation during oral argument, a sticker
having the above-noted characteristics constitutes a part of the Admitted Art.
In any event, based on counsel’s representation, not contradicted by
evidence in the record, we find those characteristics as reflecting the level of
ordinary skill and constituting basic knowledge in the art.
Claim Interpretation
According to the Appellant, “compliance information” can include
only currently effective compliance information. The Examiner determined
otherwise and took the position that “compliance information” can include
outdated or obsolete compliance information. Applying the rule of broadest
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reasonable construction consistent with the specification, we uphold the
Examiner’s position and reject Appellant’s argument.
In proceedings before the Patent and Trademark Office, claims terms
are given their broadest reasonable interpretation. In re Bigio, 381 F.3d
1320, 1324 (Fed. Cir. 2004). The broadest reasonable interpretation rule
recognizes that claims may be amended before the Patent and Trademark
Office and that an applicant has the opportunity and responsibility to remove
any ambiguity in claim meaning by making an amendment. Id. The key
word here is “reasonable,” as the permitted interpretation must be consistent
with the specification. In re Icon Health & Fitness, Inc., 496 F.3d 1374,
1379 (Fed. Cir. 2007); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989); In re
Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984).
“Absent claim language carrying a narrow meaning, the PTO should
only limit the claim based on the specification or prosecution history when
those sources expressly disclaim the broader definition.” In re Bigio, 381
F.3d at 1325. Nothing in Appellant’s specification or prosecution history
clearly indicates that “compliance information” excludes what was once up-
to-date and effective compliance information but which has since then
become outdated or obsolete. Nothing in Appellant’s specification clearly
indicates that once a subset of securities information acquires status as
compliance information it can later lose that characterization for any reason.
That perception is also reasonable. Once certain information is, at any time,
required to be disclosed to an investor, that fact can never be changed
thereafter, and by that we mean it can never be changed that at least for
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some period of time the requirement was in force and the information had to
be disclosed before a sale of that security can be consummated.
If at some subsequent time the requirement of disclosure is removed,
that does not alter the fact that the information had been required to be
disclosed and thus still can reasonably be referred to as compliance
information. During some period of time that information was subject to a
“current” requirement of disclosure. Under the broadest reasonable
interpretation rule of claim construction, “compliance information” does not
exclude out-dated or obsolete compliance information.
For instance, if the net annual investment return percentage for the last
three years is required to be disclosed for a mutual fund before the mutual
fund can be sold, the information provided or delivered at the time of sale
does not cease to be compliance information four years later. It is for all
times thereafter regarded as the compliance information for the security that
was sold or offered for sale. If Appellant desires otherwise, the claims must
be amended to clearly indicate so. Appellant made no such amendment.
The Examiner properly regarded “compliance information” for a mutual
fund as including out of date prospectuses or supplements which are no
longer required to be provided if a sale of the mutual fund is made in the
present. It is sufficient that the prospectus or supplement was at one time
required to be disclosed prior to making a sale of the mutual fund.
Our interpretation is not contradicted by any cited declaration
testimony of Appellant’s witnesses Michael Waggett and Alexander
Magary. Appellant cites to Paragraph 2 of Magary’s declaration and
Paragraph 8 of Waggett’s declaration. Neither asserts that in the securities
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field what was at one time current compliance information for a security
later ceases to be reasonably regarded or referred to as compliance
information simply due to passage of time which renders the compliance
information out-dated or obsolete.
A. The rejection of claims 51, 52, 53, 66-71, 77, 82, 83, and 92
under 35 U.S.C. § 305 as broadening the scope of original claims

Although the Examiner’s stated ground of rejection does not include
claim 53, the text of the rejection specifically discusses claim 53. (Ans.
4:23-24). Thus, we treat claim 53 as also rejected.
Per 35 U.S.C. § 305, no amended or new claim enlarging the scope of
a claim of the patent will be permitted in a reexamination proceeding. We
agree with Appellant that so long as the new claim at issue is narrower than
at least one original patent claim, there is no impermissible broadening
under 35 U.S.C. § 305. An amended or new claim in a reexamination
proceeding does not have to include every single limitation of every single
original patent claim.
According to the Examiner, claim 66 is broader than original
independent claims 13, 19, and 29. However, claim 66 depends from
original patent claim 1 and thus includes all limitations of that claim. It is
noted that a dependent claim includes all of the limitations of the claim from
which it depends. The rejection of claim 66 for impermissible broadening
under 35 U.S.C, § 305 is improper.
According to the Examiner, claim 77 is broader than original patent
claims 1, 13, and 29. But claim 77 depends from original patent claim 19
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and thus includes all limitations of that claim. The rejection of claim 77 for
impermissible broadening under 35 U.S.C. § 305 is improper.
The Examiner regards each of claims 51 and 52 as broader than
original patent claim 1. But each of claims 51 and 52 depends on original
patent claim 1 and includes all limitations of that claim. The Examiner has
not explained why each of claims 51 and 52 is broader than original patent
claim 1. The rejection of claims 51 and 52 for impermissible broadening
under 35 U.S.C. § 305 is improper.
Claim 53 depends on claim 51 or claim 52 and thus also include all
the limitations of original patent claim 1.
According to the Examiner, claim 82 is broader than original patent
claims 1, 13, and 29. But claim 82 depends from original patent claim 26
and thus includes all limitations of that claim. The rejection of claim 82 for
impermissible broadening under 35 U.S.C. § 305 is improper.
Claim 83 depends on claim 82 and thus also include all the limitations
of original patent claim 1.
According to the Examiner, claim 92 is broader than original patent
claims 1 and 13. But claim 92 depends from original patent claim 29 and
thus includes all limitations of that claim. The rejection of claim 92 for
impermissible broadening under 35 U.S.C. § 305 is improper.
In the Answer, the Examiner makes no explanation of the basis for
rejecting claims 67-71 under 35 U.S.C. § 305. Each of those claims depends
directly or indirectly from original patent claim 13 and thus includes all
limitations of that claim. The rejection of claims 67-71 for impermissible
broadening under 35 U.S.C. § 305 is improper.
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For the foregoing reasons, the rejection of claims 51-53, 66-71, 77,
82, 83, and 92 for impermissible broadening under 35 U.S.C. § 305 cannot
be sustained.
B. The rejection of claims 63, 67-71, and 83
under 35 U.S.C. § 112, second paragraph as indefinite

At oral argument, counsel for Appellant indicates that Appellant
withdraws the appeal of the indefiniteness rejection of claim 83 under
35 U.S.C. § 112, second paragraph. (Transcript 31:22-32). Thus, the
rejection of claim 83 for indefiniteness is no longer before the Board.
For claims 63 and 71, each of which includes the term “and/or,” the
Examiner states that it is unclear whether “and/or” means “and” and “or” or
“and” or “or.” (Ans. 5:21-22). We agree with the Appellant that the term,
“and/or” is an ordinary term commonly meaning either one or the other, or
both. The Examiner’s suggestion that it can mean “and” and “or” is without
basis in the record. Also, the suggestion is irrational since “and” and “or”
would appear to generate a null set since both and just one do not intersect.
Thus, the claims are not indefinite for reciting the term “and/or.”
For claims 63 and 71, each of which recites an investor and/or a
potential investor, the Examiner states that it is unclear that an investor can
also be a potential investor “as implied by the requirement of “and and or.”
(Ans. 5:23-24). First, we have already determined above that “and/or”
means “and” or “or”; and so there is no requirement of “and and or.” Also,
in any event, the Appellant correctly notes that in the context of its
specification, nothing precludes an investor, one who has already invested in
a security, from considering buying more of the same security, which would
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make him or her a potential investor. Accordingly, claims 63 and 71 are not
indefinite for reciting “and/or,” and are not indefinite for reciting an investor
and/or a potential investor.
The Examiner determined that claims 63 and 67-71 each present a
combination apparatus and method step of using. (Ans. 5:12). Citing IPXL
Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384 (Fed. Cir. 2005), the
Examiner correctly states that a single claim which claims both an apparatus
and the method steps of using the apparatus is indefinite under 35 U.S.C.
§ 112, second paragraph. The claims at issue do not have to use the exact
same words as “apparatus,” and “method.” Indeed, claim 25 which was
determined as unpatentable under 35 U.S.C. § 112, second paragraph, in
IPXL, supra, reads:
The system of claim 2 [including an input means] wherein the
predicted transaction information comprises both a transaction
type and transaction parameters associated with that transaction
type, and the user uses the input means to either change the
predicted transaction information or accept the displayed
transaction type and transaction parameters. (Emphasis
added.)

Claims 67 and 71 on appeal covers both an apparatus and a method of
using the apparatus, in a manner much more so than does claim 25 quoted
above from IXPL Holdings. For example, claim 67 is reproduced below:
67. A system comprising the computer-readable data storage
device of claim 13 and a computer comprising at least one
processor programmed to execute the computer executable
instructions to cause the computer to aid the operator in
performing the steps of:

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identifying a subset of filing documents that were
recently added to a regulatory filing document database;

searching each of the subset of documents for
compliance information;

recording document identifiers for any of the subset of
documents containing the compliance information;

extracting the compliance information from each of the
subset of documents containing the compliance information by
(i) marking the lines of text in the document containing the
compliance information, (ii) identifying a start line and an end
line of the compliance information, and (iii) copying the
compliance information starting at the start line and ending at
the end line; and

storing the extracted compliance information;

wherein the extracted compliance information is a subset
of the securities information which a government or exchange
requires be made available or delivered to an investor in at least
one mutual fund.

Claim 71 is very similar to claim 67 in that it depends on claim 13 and
adds a computer having a processor programmed to execute the computer
executable instructions stored on the computer-readable data storage device
of claim 13 to cause the performance of a plurality of specified steps.
Appellant’s argument that a computer does not comprise a process is
misplaced as it over-simplifies the issue. Claims 67 and 71 do not simply
recite the addition of a computer, but a computer performing five specific
steps, as is made evident in the above-quoted text. Independent claim 13 on
which both claims 67 and 71 depend recites a computer-readable data
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storage device comprising computer executable instructions for execution on
a computer to cause the computer to perform those same five steps. In that
context, claims 67 and 71 is simply a process which makes use of the
computer-readable storage device of claim 13, at least much more so than it
is the case with claim 25 in IPLX Holdings, supra.
Claims 68, 69, and 70 depend from claim 67 and thus suffer from the
same problem. With respect to claim 63, however, it is not apparent to us
why the Examiner regards it as reciting both an apparatus and a process.
There has been insufficient explanation by the Examiner for claim 63.
Accordingly, the rejection of claim 63 is not supported.
For the foregoing reasons, we are not persuaded of error in the
rejection of claims 67-71 under 35 U.S.C. § 112, second paragraph, as
indefinite, but the rejection of claim 63 under 35 U.S.C. § 112, second
paragraph, cannot be sustained.

C. The determination of prima facie obviousness of
claims 1-4, 8, 9, 26, 27, 31-40, 42, 44, 51-57, 59-66,
and 78-83 under 35 U.S.C. § 103 as obvious over IFN and APA

Of this group, claims 1, 9, and 26 are the independent claims. We
begin by discussing independent claim 1:
1. A computer-assisted method for manipulating
securities information, comprising:

acquiring securities information from one or more
database sources;

identifying at least one portion in each of at least two
documents in the acquired securities information as compliance
information for a particular mutual fund; and
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creating a computer-readable file from the identified
portions wherein the computer-readable file comprises
compliance information for the particular mutual fund.

Regarding IFN, the Examiner determined the following (Answer
6:25-28) all of which are not disputed by Appellant:
The IFN document describes a service for accessing EDGAR1
filings, EDGAR being a database. The IFN service acquires
information regarding SEC filings, which are securities
information, from the EDGAR database. The documents can
be sorted (p. 13), searched, edited, and stored (p.20) and the
documents can be downloaded (p.12).

1. EDGAR, the Electronic Data Gathering, Analysis, and Retrieval system, performs
automated collection, validation. indexing, acceptance, and forwarding of submissions by
companies and others who are required by law to file forms with the U.S. Securities and
Exchange Commission (SEC). Its primary purpose is to increase the efficiency and
fairness of the securities market for the benefit of investors, corporations, and the
economy by accelerating the receipt, acceptance, dissemination, and analysis of time-
sensitive corporate information filed with the agency.
….

Based on the foregoing, we find that one with ordinary skill in the art
would have known at the time of Appellant’s invention that the EDGAR
database provided by the SEC contained securities information corporations
filed with the SEC and was electronically searchable for online access to the
stored securities information. Appellant states (Brief 44:4-6): “The SEC
mandated the filing of SEC documents electronically so that the EDGAR
database could be made searchable and thereby make the information therein
more readily accessible to investors. (Fein declaration, ¶ 2).”
The Examiner also determined that EDGAR stores each mutual fund
prospectus and associated updates as separate document filings.
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(Ans. 20:12-16). That determination is not disputed by Appellant. We have
no reason to disturb that finding of the Examiner.
At the core of the dispute with regard to the rejection on appeal are the
two claim limitations; (1) identifying at least one portion in each of at least
two documents in the acquired securities information as compliance
information for a particular mutual fund; and (2) creating a computer
readable file from the identified portion wherein the computer readable file
comprises compliance information for the particular mutual fund. The
rationale articulated by the Examiner boils down to essentially that using the
IFN system to access EDGAR to identify the compliance information for a
mutual fund would be simply doing electronically what was previously done
via paper copies. In that regard, the Examiner stated (Final Action 74:38 to
75:3):
Identifying compliance information was known. It was
required to be delivered, if not identified it otherwise could not
be delivered. The patent owner arguments above including the
declarations also support known delivery concepts including
hardcopy dissemination. Considering the SEC made such
information available electronically for dissemination, doing so
electronically using the system described in the IFN document
would be a simple matter of doing what was known to already
be done (and required) by the tedious hardcopy method using
an available electronically accessible database which was also
known to have been made available for purposes including
making information available and for disseminating such
information.
In the Answer, the Examiner clarified the above by referring to the
previously known paper practice involving a mutual fund prospectus and an
associated “sticker”:
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[Ans. 7:19-23] It would have been obvious to one with
ordinary skill in the art at the time the invention was made to do
electronically using the IFN system what was more tediously
done with paper copies of mutual fund information as taught by
the APA using stickers, and to do so in order to provide
information which was being requested faster via electronic
format as taught by IFN.

[Ans. 8:5-8] It would have been obvious to one with ordinary
skill in the art at the time the invention was made, in light of the
IFN document, to do electronically as taught by IFN what was
commonly done with hard copy as was known to be the purpose
of stickers, for example, in order to get the updated information
to investors faster.

The Examiner’s position that using the IFN system to access EDGAR
in a manner that meets the claim merely does electronically what was
already done with paper copies of information is reasonably based on the
determined facts. We agree, because it was already known in the art in pre-
existing paper practice to physically attach the “sticker” document to a
mutual fund prospectus document to form a single new document and as
noted above the EDGAR database electronically stores each mutual fund
prospectus and update for that prospectus as separate filings. One with
ordinary skill in the art would have known to implement the known paper
combining process electronically, i.e., creating one electronically readable
file from the two separate filings for a mutual fund. Note that one with
ordinary skill in the art possesses ordinary creativity and is not an
automaton. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
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We note also that during oral argument, counsel for Appellant
admitted that in pre-existing paper practice, the “sticker” itself as a
document is prepared by combining pertinent mutual fund compliance
information from more than one separate document. (Oral Argument
Transcript 9:18-26; 10:17-20). That buttresses the conclusion that it would
have been obvious to one with ordinary skill to electronically combine
mutual fund compliance information from more than one document.
Claim 1 also recites identifying “at least one portion” in each of at
least two documents as compliance information for a particular mutual fund.
A mutual fund prospectus and its associated sticker both include compliance
information. The term “at least one portion” is broad and covers the whole
of an object. During examination, claim terms are given their broadest
reasonable interpretation consistent with the specification. In re Icon Health
& Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007); In re Zletz, 893 F.2d
319, 321 (Fed. Cir. 1989); In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir.
1984). Applying that rule of construction, we recognize the whole of a
document as satisfying the recitation of “at least one portion.”
Appellant argues that it is entirely counterintuitive for a seller of a
mutual fund or other non-corporate security (or its broker) who already
provided compliance information to the SEC to return to the SEC to
determine what is the up-to-date compliance information and/or to obtain a
copy of that compliance information to provide to an investor. (Brief 54:30
to 55:1). The argument is misplaced and unpersuasive, as it has too narrow
a focus as is discussed below.
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First, the claim is not limited to providing compliance information
from an electronic database to those who initially placed the compliance
information in the database. It covers providing that information to anyone
else as well, who do not already themselves have the information. Secondly,
even those who initially placed the information in the database also have
legitimate reasons for accessing them there, e.g., to check on their content as
stored, to see what is being provided to others, to use the database as a
backup to their own separately maintained resource, … etc. Third, it is
generally not counterintuitive to obtain information from any source or
facility that has the information. Rather, it reflects mere common sense.
Fourth, obviousness is determined from the perspective of a hypothetical
person with ordinary skill in the art, and not of any actual person or entity,
and that hypothetical person is not one who initially provided the
compliance information to the database.
Appellant argues that none of the prior art relied on to support the
rejection teaches or suggests using EDGAR to access and identify
compliance information for a mutual fund. (Brief 56:13-15). The argument
is misplaced. Using EDGAR to access compliance information for mutual
funds does not have to be explicitly stated in any prior art reference.
Motivation to combine teachings need not be expressly stated in any
prior art reference. In re Kahn, 441 F.3d 977, 989 (Fed. Cir. 2006). There
need only be an articulated reasoning with rational underpinnings to support
a motivation to combine teachings. In re Kahn, 441 F.3d at 988.
A mutual fund is a security. The Appellant does not dispute that at
the time of Appellant’s invention the SEC’s EDGAR database stored filings
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of mutual fund compliance information and that that was public knowledge.
The Examiner specifically determined that EDGAR stored mutual fund
prospectuses and updates thereof (Ans. 19:18-24; 20:12-16), which finding
has not been disputed by Appellant. Through EDGAR the Securities
Exchange Commission makes available to the public all required filings, for
whatever purpose one desires. On that basis, the Examiner correctly
determined that it would have been obvious to one with ordinary skill to
access EDGAR to identify and obtain mutual fund compliance information.
We agree with Appellant that a “broker” has not been established as a
person of ordinary skill in the art. However, that is inconsequential to the
merits of the rejection on appeal. The obviousness question is determined
from the perspective of a hypothetical person of ordinary skill in the art and
not of any actual person. From our review of the record, it is evident that as
a whole the Examiner was considering obviousness from the perspective of a
hypothetical person with ordinary skill in the art. The reference to “broker,”
although incorrect, is inconsequential. The Examiner merely used “broker”
as a nominal substitute for a hypothetical person of ordinary skill in the art.
To the extent that Appellant believes that the Examiner must identify an
actual person having ordinary skill in the art, that is incorrect. Obviousness
is determined on the basis of a “hypothetical person” having ordinary skill in
the art, not on the basis of the knowledge of any actual person or persons.
Appellant argues that EDGAR is unfitting for carrying out the claimed
invention. The argument is misplaced from several perspectives. First, the
“unfittingness” has to rise to the level of unenabling disclosure of the prior
art as a whole to undermine the rejection. That means one with ordinary
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skill in the art, who has ordinary creativity and is not an automaton, KSR
Int’l Co. v. Teleflex Inc., 550 U.S. at 421, must require more than routine
experimentation in accessing EDGAR to make and use the claimed
invention. General inefficiency is not sufficient.
Secondly, even if EDGAR is truly inefficient, and incapable of being
adapted for use with just mere ordinary level of experimentation, nothing
precludes one with ordinary skill in the art who is presumed to possess
ordinary creativity from constructing and using a different database for
storing mutual fund compliance information, which does not share
EDGAR’s alleged problems and complications. In that regard, note that a
prior art reference must be considered for all the technology it discloses and
suggests and its teaching value is not limited to the particular problem it is
describing or attempting to protect. EWP Corp. v. Reliance Universal Inc.,
755 F.2d 898, 907 (Fed. Cir. 1985).
Third, we have carefully considered the alleged difficulties of using
EDGAR and do not find that they would amount to more than routine
experimentation by one with ordinary skill in the art to make and use
Appellant’s claimed invention. We reject Appellant’s argument that the
prior art relied on by the Examiner is unenabling.
It does not matter that EDGAR was not designed for the specific
purpose of identifying compliance information for a seller of mutual fund or
other non-corporate security. The question is whether the experimentation
needed by one with ordinary skill in the art is undue, i.e., more than routine.
Appellant has not demonstrated that it is so.
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Appellant points out that information for a mutual fund is stored in
EDGAR in submissions made in the name of one or more “corporate
issuers” and not in the fund name used for marketing to investors and
therefore locating compliance information for a mutual fund requires
knowing the names of all “issuers” which may have filed with EDGAR
information for that mutual fund. (Brief 10:13-18). According to ¶ 7 of the
Magary declaration, submissions for a mutual fund are almost always filed
with EDGAR by one or more separate corporate issuers created or engaged
by the mutual fund company for that purpose. That information is not stored
by mutual fund name but by issuer name is relied on by Appellant as one of
the main reasons why locating submissions including information for a
particular mutual fund is difficult. (Brief 10:9-27).
At oral argument however, in response to inquiry from the panel,
counsel for Appellant indicates that the issuer names submitting information
for particular mutual funds are not a secret and can be obtained from the
mutual fund company fund by simply a telephone call. (Oral Argument
Transcript 25:17 to 18:9). Note the following exchange (25:32 to 26:6):
JUDGE LEE: So it’s not a secret?
MR. SCHINDLER: No.
JUDGE LEE: You can –
MR. SCHINDLER: No, absolutely –
JUDGE LEE: You can call up [the mutual fund company] and
they will tell you who the issuer [of the mutual fund] is?
MR. SCHINDLER: Correct. Correct. ….
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Appellant acknowledges that once issuer name(s) is identified for a
specific fund, it may be used to search EDGAR for mutual fund filings via
issuer name. (Brief 11:6-8).
Appellant further argues that in actuality the issuer name used in the
filings may contain slight variations from what it is supposed to be and
therefore using the issuer name to search for mutual fund compliance
information is not sufficiently reliable to deliver accurate compliance
information. (Brief 11:8-11). Appellant notes that it seeks to obtain a more
accurate identifier for the issuers that submit filings for a mutual fund and
uses a central index key (CIK) for that purpose. (Brief 11:11-13). In that
regard, Appellant states (Brief 11:13-22):
The CIK is a unique identifier for the issuer contained in a field
in EDGAR. (NewRiver patent, col. 7, lines 14-17). NewRiver
obtains the CIK by doing a search in EDGAR for the issuer
name and then reviewing a filing to determine the CIK that
identifies that filer. (NewRiver patent, col. 7, lines 17-20).
Thereafter, the CIK(s) may be used to query EDGAR for all
submissions including the CIK regardless of the name used by
the issuer. Thus, if there are slight name variations in the
names used for the issuers, the use of the CIK will ensure that
all filings for a particular issuer are retried irrespective of such
name variations. (NewRiver patent, col. 7, lines 17-20). This
technique “boils down” the innumerable EDGAR filings to a
subset filed by the small number of issuers known to submit
filings for the particular security of interest.

The argument is misplaced. If the slight variations referred to by the
Appellant for issuer names are officially approved issuer names of the
mutual fund company, then they can be determined by a telephone call to the
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mutual company, as previously discussed. On the other hand, if they are,
instead, something generated by inadvertent typographical mistake or
spelling error when fund information is entered into EDGAR, Appellant’s
claims are not drafted with such extremely narrow scope so as to require
perfect accuracy without exception. In our view, if only fund information
filed by use of only the correctly spelled names are found, that is sufficient.
Furthermore, Appellant’s method of using the CIK (central index key) to
identify the filer of information is not recited in the claim, and also suffers
from potential mistype or general mis-entry of the CIK.
Appellant points out that once a set of submissions from an issuer is
identified, each submission is searched for information on the particular
security of interest, because a single filing from the issuer may contain
submissions for multiple mutual funds. (Brief 11:23-26). Thus, Appellant
indicates that it may be necessary to sift through voluminous amounts of
data to find information on the security of interest. (Brief 11:26-27).
Tedious but routine effort does not constitute undue experimentation.
Appellant has not indicated even what experimentation, if any, is necessary
to sift through a filing to select entries associated with a particular mutual
fund. And it is not apparent how Appellant’s own disclosed embodiment is
free of the need to sift through all data in a filing to select the information
for a particular mutual fund, and Appellant has not indicated that it is so.
Appellant further argues that once an item of information is identified
as being applicable to a particular mutual fund, its effective date must be
determined using rules that may vary depending on the content of the
information, and so some items of information may be disregarded as being
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no longer effective. (Brief 11:27 to 12:3). The argument is misplaced and
also unpersuasive. It is misplaced because as a matter of claim interpretation
we have already determined that compliance information is broad enough to
include now outdated but previously effective compliance information. It is
unpersuasive because Appellant has not explained why determining whether
a certain item of information pertaining to a mutual fund is now outdated
would require undue experimentation. As we have discussed, the
hypothetical person of ordinary skill in the art possesses the basic threshold
knowledge of both a computer professional concerning databases and a
securities professional about determining compliance information.
The Appellant argues that the system described in IFN for accessing
EDGAR is incapable of accessing EDGAR to retrieve compliance
information for a mutual fund contained in more than one filing and
producing the combined results in one document. That argument is
misplaced because precisely “how” it can accomplish a desired action does
not have to be described in IFN. As discussed earlier, one can call the
mutual fund company to find out the names of all issuers which make filings
for a mutual fund, and the IFN document does not have to describe making
the telephone call. In general, if the IFN system for accessing EDGAR does
not have a particular ready-made feature that is necessary for accessing
EDGAR in a desirable way, one with ordinary skill in the art is free to
implement it separately. One with ordinary skill in the art is not locked-in or
limited to employing only the existing functions and features of the IFN.
So long as a satisfactory access feature can be developed by one with
ordinary skill in the art without undue experimentation, the applied prior art
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is not unenabling. Appellant does not make the assertion that one with
ordinary skill in the art would have required undue experimentation to write
software capable of merging selected information from a first EDGAR filing
with selected information from a second EDGAR filing and present the
combination in an output document. It is of no moment that the Examiner
has not adequately explained how the specific system of the IFN actually
does that with respect to EDGAR filings.
We conclude that the Appellant has failed to show that the IFN has
unenabling disclosure with respect to the subject matter of claim 1. And for
all of the foregoing reasons, we conclude that Appellant has failed to show
that the Examiner has not set forth a prima facie case of obviousness for the
subject matter of claim 1.
Claim 3 depends on claim 1 and recites that the acquiring step
comprises acquiring the securities information from a database of EDGAR
filings with the Securities and Exchange Commissions. All of Appellant’s
arguments with regard to prima facie obviousness have been discussed
above in the context of claim 1 and rejected. Appellant’s argument based on
alleged objective evidence of nonobviousness will be discussed in a separate
section below.
While claim 1 requires extracting compliance information for a
particular mutual fund, independent claim 9 requires extracting compliance
information from at least two documents each comprising information for a
particular mutual fund, and thus providing access to compliance information
for at least two mutual funds offered by different fund issuers. Unlike claim
1, claim 9 does not require the extracted information from at least two
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documents to be combined into a single computer readable file or document.
It is sufficient to meet the claim if some compliance information for one
mutual fund from one issuer is extracted from one document and compliance
information for a mutual fund of another issuer is extracted from another
document, and if access to the extracted information for both is provided.
Appellant makes similar arguments as those presented in connection
with claim 1, i.e., that “compliance information” should be interpreted to
exclude obsolete or outdated compliance information, that no one would
actually use the IFN system to access compliance information for a mutual
fund, that it is counter-intuitive to use the EDGAR database for obtaining
compliance information for a mutual fund, and that the applied prior art is
unenabling with regard to accessing mutual fund compliance information
from EDGAR. All of those arguments have been addressed and rejected in
our discussion of prima facie obviousness of claim 1. Appellant’s argument
based on alleged objective evidence of nonobviousness will be discussed in
a separate section below.
With regard to independent claim 26, Appellant makes similar
arguments as those presented in connection with claim 1, i.e., that
“compliance information” should be interpreted to exclude obsolete or
outdated compliance information, that no one would actually use the IFN
system to access compliance information for a mutual fund, that it is
counter-intuitive to use the EDGAR database for obtaining compliance
information for a mutual fund, and that the applied prior art is unenabling
with regard to accessing mutual fund compliance information from EDGAR.
All of those arguments have been addressed and rejected in our discussion of
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prima facie obviousness of claim 1. Appellant’s argument based on alleged
objective evidence of nonobviousness will be discussed in a separate section.
Claim 54 depends on claim 9 and further recites: “wherein the
compliance information extracted by the obtainment subsystem is a subset of
securities information in the one or more database sources about the
particular mutual fund which a government or exchange requires be made
available or delivered to an investor in the particular mutual fund.” We
agree with Appellant that “subset” means less than the entire set. Thus,
according to claim 54, less than all information which are required to be
made available or delivered to an investor for a mutual fund is extracted.
However, one with ordinary skill in the art would not have expected
that all compliance information for a particular mutual fund are stored in a
single filing. Appellant itself has acknowledged that issuers make multiple
filings containing compliance information for a mutual fund. Thus, each
time compliance information for a particular mutual fund is obtained from
one filing or document in EDGAR, the claim limitation is met that what has
been obtained is a subset of all the securities information for a mutual fund
which a government or exchange requires be made available or delivered to
an investor in the particular mutual fund.
Claim 32 depends on either claim 1 or claim 19 or claim 29. We
regard the rejection of claim 32 here as directed to 32/1 and not 32/19 or
32/29. Like claim 54, claim 32 it adds the limitation that the compliance
information is a subset of securities information in the one or more database
sources about the particular mutual fund which a government or exchange
requires be made available or delivered to an investor in the particular
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mutual fund. In the context of claim 54 above, we have already addressed
and rejected Appellant’s argument in that regard.
Claim 80 depends from claim 78 which depends from claim 26. It
further specifies a server programmed to: (1) receive a request that
identifies a first mutual fund in a unique identifier and requests compliance
information for the first mutual fund, and (2) respond to the request by
returning the compliance information for the first mutual fund but not any
securities information about the first mutual fund that is not identified as
compliance information for the first mutual fund. We agree with Appellant
that the IFN’s Smart Doc feature and the Smart Tagging feature specifically
relied on by the Examiner (Ans. 43:4-25) do not reasonably suggest to one
with ordinary skill a server which returns only compliance information of a
mutual fund but not any other information about the mutual fund. Appellant
states (Brief 77:10-16):
[The] IFN system does not have a compliance server
programmed to return compliance information but not any
securities information about the mutual fund that is not
identified as compliance information, as required by claim 80.
Rather, to the extent the IFN system can be considered to have
a server that can return any information for a mutual fund, it
would have returned every filing ever made for the mutual
fund, which would have necessarily included securities
information for the mutual fund that is not required to be made
available to an investor and therefore is not compliance
information. (Waggert declaration, ¶¶ 7-10).

The above-quoted assertions are essentially correct. While the
information retrieved perhaps could have been limited some such as by date
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range, all of the information about the mutual fund in the desired date range
would have been returned without excluding that which is not compliance
information. On basis presented by the Examiner, we conclude that the
rejection of claim 80 is based on improper hindsight in light of Appellant’s
own disclosure. We note also that no claim depends from claim 80.
Appellant has not separately argued the merits of claims 2-4, 8, 27,
31, 33, 34, 35/32/1, 36-40, 42, 44, 51-53, 55-57, 59-66, 78, 79, and 81-83
from that of claim 1.
Accordingly, Appellant has not shown error in the determination of
prima facie obviousness of claims 1-4, 8, 9, 26, 27, 31, 32/1, 33, 34, 35/32/1,
36-40, 42, 44, 51-57, 59-66, 78, 79, and 81-83 under 35 U.S.C. § 103 as
obvious over IFN and APA.
However, the Examiner’s conclusion that claim 80 would have been
prima facie obvious under 35 U.S.C. § 103 over IFN and APA cannot be
sustained.
D. The determination of prima facie obviousness
of claim 43 over IFN, APA, and EDGARSCAN

Claim 43 depends on claim 2 which depends on claim 1. Appellant
has not argued the merits of claim 43 separately from that of claims 1 and 2.
Accordingly, Appellant has not shown error in the determination of prima
facie obviousness of claim 43.
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E. The determination of prima facie obviousness
of claims 5, 41, and 45 over IFN, APA, and NYU

Appellant has not argued the merits of claim 41 separately from that
of claim 1. However, Appellant argues the merits of claims 5 and 45
separately from that of claim 1.
Claim 5 depends on claim 1 and further recites that the identifying
step comprises matching a central index key to a CUSIP number associated
with the mutual fund, wherein the central index key is provided by EDGAR.
In the context of Appellant’s specification, the central index key (CIK) is a
unique identifier assigned to entities which have made filings with the
Security Exchange Commission. (Ans. 15:9-10). Claim 45 also depends on
claim 1. Claim 45 recites receiving a unique identifier for a particular
mutual fund and mapping the unique identifier to a central index key.
Rather than referring to a CUSIP, claim 45 refers to a unique identifier.
The Examiner’s stated rationale is as follows (Ans. 15:11-19):
The NYU Filing Retrieval Toolkit suggests, under “Ticker
Search,” that “[w]ork is underway to provide investors with
CUSIP Symbol search” for searching EDGAR filings. A
CUSIP number uniquely identifies a particular security. Thus,
EDGAR filings returned from such a CUSIP Symbol search
would, according to Applicants’ Admitted Prior Art, include the
CIK. Therefore, the suggested NYU CUSIP Symbol search
would indirectly be matching the CUSIP number and the CIK.

Further, it would be helpful to match the CUSIP number with
the CIK, since, as disclosed in Applicants’ Admitted Prior Art
at column 7, lines 36-37, an investor is likely to reference a
mutual fund by, among other possibilities, the CUSIP number.
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The rationale is misplaced and does not support a proper rejection of
claims 5 and 45. At best, NYU reasonably would have suggested using the
CUSIP to search and returning all filings for the security identified by that
CUSIP. There is no reasonable suggestion for one with ordinary skill in the
art to match a CUSIP to a central index key as is required by claim 5, or map
a unique identifier for a particular mutual fund, such as a CUSIP, to a central
index key. The fact that a central index key may be present on each
document returned by making a CUSIP search for a security does not equate
to anyone’s having associated the CUSIP with a central index key or
mapped a unique identifier to the central index key. No such association or
mapping from NYU has been reasonably identified and explained by the
Examiner. Moreover, claim 45 further requires using the central index key
to make access to filings.
For the foregoing reasons, the Examiner’s conclusion that claims 5
and 45 would have been prima facie obvious under 35 U.S.C. § 103 over
IFN, APA, and NYU cannot be sustained.
However, Appellant has not shown error in the determination of prima
facie obviousness of claim 41.
F. The determination of prima facie obviousness
of claim 6 over IFN, APA, NYU, and Cwenar

Claim 6 depends on claim 5. As applied by the Examiner, Cwenar
does not make up for the deficiency of IFN, APA, and NYU with respect to
the limitations in claim 5. Accordingly, the Examiner’s conclusion that
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claim 6 would have been prima facie obvious under 35 U.S.C. § 103 over
IFN, APA, and NYU cannot be sustained.

G. The determination of prima facie obviousness of claim 7
over IFN, APA, NYU, Cwenar, and an example SEC filing

Claim 7 depends on claim 6 which depends on claim 5. As applied by
the Examiner, Cwenar and an example SEC filing do not make up for the
deficiency of IFN, APA, and NYU with respect to the limitations in claim 5.
Accordingly, the Examiner’s conclusion that claim 7 would have been prima
facie obvious under 35 U.S.C. § 103 over IFN, APA, NYU, Cwenar, and an
example SEC filing cannot be sustained.
H. The determination of prima facie obviousness
of claim 58 over IFN, APA, and the Validation Book

Claim 58 depends on claim 9. Appellant has not separately argued the
merits of claim 58 from that of claim 9. Accordingly, Appellant has not
shown error in the determination of prima facie obviousness of claim 58.

I. The determination of prima facie obviousness
of claims 10 and 12 over IFN, APA, and the LookSmart Article

Claim 10 depends on claim 9 and claim 12 depends on claim 10.
Appellant states that the LookSmart Article adds nothing more to the
disclosure of IFN than that the system of IFN provides an ability to use
Smart Tags for accessing sections of lengthy documents and allowing users
to customize which sections should be printed. (Brief 64:24-27). Appellant
argues that the LookSmart Article adds nothing to the disclosure of IFN and
APA, that would cure the deficiencies of those items of prior art as applied
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to the features of independent claim 9. (Brief 65:5-10). However, as we
discussed above in the context of claim 9, there is no deficiency of the prior
art for supporting prima facie obviousness of independent claim 9.
Accordingly, Appellant has not shown error in the determination of
prima facie obviousness of claims 10 and 12.

J. The determination of prima facie obviousness
of claim 11 over IFN, APA, the LookSmart Article
and the Validation Book

Claim 11 depends on claim 10 which depends on claim 9. Appellant
sets forth arguments previously already rejected in context of independent
claim 9. Claim 11 requires five subsystems: (1) an acquisition subsystem
for acquiring the securities information by accessing a database of EDGAR
submissions containing the compliance information; (2) a cataloging
subsystem for locating the compliance information in the EDGAR
submissions; (3) a splitting subsystem for extracting the compliance
information from the EDGAR submissions; (4) an effective date subsystem
for identifying the effective date of the compliance information; and (5) a
quality assurance subsystem for reviewing the compliance information to
assure its correctness. While Appellant asserts that the IFN tool does not
remotely comprise all of these subsystems, the assertion is a bare statement
and does not address the Examiner’s specific reasoning and analysis as to
why the applied prior art gives rise to each of the enumerated subsystems.
Appellant argues (Brief 66:23-28):
The Final Action bases the rejection entirely on the assertion
that a user would have had the ability to weed through the
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mountain of information returned by the IFN tool, and perform
the functions of the claimed cataloging subsystem, splitting
subsystem, effective date subsystem and quality assurance
subsystem. This is clear legal error. A person is not a
subsystem, and cannot satisfy any of the recited limitations
directed to subsystems for locating, extracting, identifying the
effective date of, and reviewing compliance information.
The argument is misplaced. Our review of the Examiner’s stated
reasoning on pages 25-28 of the Examiner’s Answer reveals that the
Examiner did not read any of the recited subsystems onto solely a human
being, a person. Rather, the Examiner read each of recited subsystems onto
a computer in the applied prior art, one programmed to assist an operator.
Appellant has not established why such a reading is unreasonable in light of
Appellant’s own disclosure.
We also rejected Appellant’s argument that it would not have been
obvious to one with ordinary skill in the art to access mutual fund
compliance information from EDGAR, for reasons already discussed above
in connection with the rejection of claim 9. The Appellant has also not
explained why one with ordinary skill in the art, when presented by
computer with compliance information obtained from EDGAR, would not
have been able to assess the effective date of the compliance information.
Accordingly, Appellant has not shown error in the determination of prima
facie obviousness of claim 11.
K. The determination of prima facie obviousness
of claims 13, 14, 17, 67, 68, 69, and 71 over
IFN and Word Perfect 5.1 Mini Manual

Claim 13 is an independent claim. All other claims of this rejection
depend directly or indirectly from claim 13. Claim 13 requires identifying a
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subset of documents, recording document identifiers for documents
containing the compliance information, and searching the documents for
compliance information. The Examiner relies on the Smart Tagging feature
of IFN to accomplish those features. Evidently, the Examiner is of the
position that IFN’s Smart Tagging feature provides a recognized ability to
tag a certain document within a multi-document filing as containing
compliance information for a security. That position, however, is rebutted
by the declaration testimony of Michael Waggett. In that regard, pertinent
portion of Waggett’s declaration, in paragraph 7, states:
One difference between EDGAR filings for corporate and non-
corporate securities is that filings for non-corporate securities
may contain numerous documents, each potentially relating to a
different fund (e.g., a single filing may contain a prospectus for
a first fund, a supplement for a second, a statement of additional
information for a third, etc.). I understand that the Office
Action has adopted the position that the “Smart Tagging”
feature of the Edgar Watch tool depicted on p.8 of the IFN
document would enable the user to separate a document
associated with a particular fund from all of the other
documents that may be contained in a particular filing. This is
incorrect. The filing “sections” depicted in the interface of p.8
appear to be headings within a corporate filing (i.e., an annual
report for Microsoft Corporation, which is also shown in the
interface of p.9). Thus, the “Smart Tagging” feature appears to
index filings based upon internal headings within the filing. A
filing with documents for multiple non-corporate securities like
mutual funds would not have the type of standardized
formatting that the Smart Tagging feature uses, so I believe the
Smart Tagging feature would be ineffective for separating
documents for a particular mutual fund from other documents.
Based on the foregoing, we conclude that the Examiner’s
determination that the “Smart Tagging” feature of IFN records document
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identifiers for documents containing compliance information is without
adequate support on this record.
Claims 14, 17, 67, 68, 69, and 71 depend directly or indirectly from
claim 13. For the foregoing reasons, the rejection of claims 13, 14, 17, 67,
68, 69, and 71 as obvious over IFN and Word Perfect 5.1 Mini Manual
cannot be sustained.
L. The determination of prima facie obviousness of claim 70
over IFN, Word Perfect 5.1 Mini Manual, and EDGARSCAN

Claim 70 depends on claim 68 which depends on claim 67. In turn,
claim 67 depends on claim 13. The Examiner’s reliance on EDGARSCAN
does not cure the deficiency of IFN and Word Perfect 5.1 Mini Manual as is
discussed above in the context of claim 13. Thus, the rejection of claim 70
as obvious over IFN, Word Perfect 5.1 Mini Manual, and EDGARSCAN
cannot be sustained.
M. The determination of prima facie obviousness of claims 15 and 16
over IFN, APA, and Word Perfect 5.1 Mini Manual

Claim 15 depends on claim 13, and claim 16 depends on claim 15.
The Examiner’s reliance on APA does not cure the deficiency of IFN and
Word Perfect 5.1 Mini Manual as is discussed above in the context of claim
13. Thus, the rejection of claims 15 and 16 as obvious over IFN, APA, and
Word Perfect 5.1 Mini Manual cannot be sustained.

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N. The determination of prima facie obviousness of claim 18
over IFN, Word Perfect 5.1 Mini Manual, and the Validation Book

Claim 18 depends on claim 13. The Examiner’s reliance on the
Validation Book does not cure the deficiency of IFN and Word Perfect 5.1
Mini Manual as is discussed above in the context of claim 13. Thus, the
rejection of claim 18 as obvious over IFN, Word Perfect 5.1 Mini Manual,
and the Validation Book cannot be sustained.

O. The determination of prima facie obviousness of claims 19, 20,
23, 24, 32, 35, and 77 over IFN and Word Perfect 5.1 Mini Manual

Claim 19 is an independent claim. Like claim 13, it requires
identifying a subset of documents, recording document identifiers for
documents containing the compliance information, and searching the
documents for compliance information. The Examiner relies on the Smart
Tagging feature of IFN to accomplish those features. (Ans. 36:11-25).
Evidently, the Examiner is of the position that IFN’s Smart Tagging feature
provides a recognized ability to tag a certain document within a multi-
document filing as containing compliance information for a security. That
position, however, is rebutted by the declaration testimony of Michael
Waggett. In that regard, pertinent portion of Waggett’s declaration, in
paragraph 7, states:
One difference between EDGAR filings for corporate and non-
corporate securities is that filings for non-corporate securities
may contain numerous documents, each potentially relating to a
different fund (e.g., a single filing may contain a prospectus for
a first fund, a supplement for a second, a statement of additional
information for a third, etc.). I understand that the Office
Action has adopted the position that the “Smart Tagging”
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feature of the Edgar Watch tool depicted on p.8 of the IFN
document would enable the user to separate a document
associated with a particular fund from all of the other
documents that may be contained in a particular filing. This is
incorrect. The filing “sections” depicted in the interface of p.8
appear to be headings within a corporate filing (i.e., an annual
report for Microsoft Corporation, which is also shown in the
interface of p.9). Thus, the “Smart Tagging” feature appears to
index filings based upon internal headings within the filing. A
filing with documents for multiple non-corporate securities like
mutual funds would not have the type of standardized
formatting that the Smart Tagging feature uses, so I believe the
Smart Tagging feature would be ineffective for separating
documents for a particular mutual fund from other documents.
Based on the foregoing, we conclude that the Examiner’s
determination that the “Smart Tagging” feature of IFN records document
identifiers for documents containing compliance information is without
adequate support on this record.
Claims 20, 23, 24, 32/19, 35/32/19, and 77 depend directly or
indirectly from claim 19.
For the foregoing reasons, the rejection of claims 20, 23, 24, 32/19,
35/32/19, and 77 as obvious over IFN and Word Perfect 5.1 Mini Manual
cannot be sustained.
P. The determination of prima facie obviousness of
claims 21 and 22 over IFN, APA, and Word Perfect 5.1 Mini Manual

Claim 22 depends on claim 21. Claim 21 depends on claim 20.
Claim 20 depends on claim 19. The Examiner’s reliance on APA does not
cure the deficiency of IFN and Word Perfect 5.1 Mini Manual as is
discussed above in the context of claim 19. Thus, the rejection of claims 21
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and 22 as obvious over IFN, APA, and Word Perfect 5.1 Mini Manual
cannot be sustained.
Q. The determination of prima facie obviousness of claim 25
over IFN, Word Perfect 5.1 Mini Manual, and the Validation Book

Claim 25 depends on claim 19. The Examiner’s reliance on the
Validation Book does not cure the deficiency of IFN and Word Perfect 5.1
Mini Manual as is discussed above in the context of claim 19. Thus, the
rejection of claim 25 as obvious over IFN, Word Perfect 5.1 Mini Manual,
and the Validation Book cannot be sustained.
R. The determination of prima facie obviousness
of claim 84 over IFN, APA, and EDGARSCAN

Claim 84 depends on claim 26. Appellant has not argued the merits of
claim 84 separately from that of claim 26. Accordingly, Appellant has not
shown error in the determination of prima facie obviousness of claim 84.
S. The determination of prima facie
obviousness of claim 28 over IFN, APA, and NYU

Claim 28 depends on claim 26. Appellant has not argued the merits of
claim 28 separately from that of claim 26. Accordingly, Appellant has not
shown error in the determination of prima facie obviousness of claim 28.
T. The determination of prima facie obviousness of
claims 29, 32, 35, 85-88, and 92 over APA and NYU

Claim 29 is an independent claim. Claims 32/29, 35/32/29, 85-88,
and 92 each depend directly or indirectly from claim 29. Claim 29 reads as
follows:
29. A method for retrieving compliance information
for a mutual fund, comprising:
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receiving a CUSIP number unique to a particular mutual
fund;
determining whether effective compliance information is
available for the particular mutual fund;
if effective compliance information is available,
transmitting compliance information for the mutual fund
specified by the identifier.

As is already discussed above in connection with claim 1, one with
ordinary skill in the art recognized that mutual fund compliance information
is stored somewhere in the EDGAR database. Appellant acknowledges that
the NYU document discloses a “filing retrieval toolkit” which allows users
to search for EDGAR filings and also discloses that “work is underway to
provide investors with CUSIP symbol search.” (Brief 78:22-24). Appellant
also does not dispute that a mutual fund is in fact already associated in the
securities industry with a unique CUSIP number, and that that fact was
known to one with ordinary skill in the art. We agree with the Examiner that
the NYU disclosure reasonably would have suggested using the CUSIP of a
mutual fund to search and return all filings for the mutual fund identified by
that CUSIP.
Appellant argues that based on Waggett’s declaration testimony, a
CUSIP- based search capability would not return all of the filings of a
mutual fund, as it would not identify the issuers that submitted EDGAR
filings for the fund of interest. (Brief 81:10-13). The argument is
misplaced, because claim 29 does not require producing all of the filings
made for a particular mutual fund. Returning less than all of the filings
made for a particular mutual fund also satisfies claim 29.
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Appellant argues that even if the NYU tool is somehow able to
provide the names of all issuers which filed submissions relating to a mutual
fund, there is no functionality provided to identify, within the universe of
filings associated with an issuer, which documents are related to the
particular mutual fund of interest. That argument is also misplaced, because
claim 29 does not require the search to yield only the compliance
information about a particular mutual fund to the exclusion of the
information for all other mutual funds.
Moreover, although the NYU article does not describe precisely how
it uses a CUSIP to return compliance information for a mutual fund, it does
not have to disclose what one with ordinary skill in the art could figure out
how to do. During oral argument, Appellant’s counsel acknowledged that
names of issuers who have made filings for particular mutual funds are not a
secret and can be obtained simply by making a call to the mutual fund
company. (Oral Argument Transcript 25:17 to 26:9). Appellant also does
not contend that given a multi-document filing including information on
respective mutual funds in separate documents, one with ordinary skill
would not have been able to figure out how to pick out one document having
to do with one mutual fund.
Appellant asserts that the task is not so straight forward. However,
“straight forward” is not the measuring yardstick. Appellant has not
established that the NYU document is unenabling insofar as accessing
mutual fund compliance information by the fund’s CUSIP number is
concerned. In that connection, Appellant presents the same arguments it
advanced in the context of the rejection of claim 1 which urge that the IFN
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disclosure is unenabling for accessing mutual fund compliance information
from EDGAR. We reject them for the same reasons already discussed above
in the context of claim 1, and add the following discussion for emphasis.
The Appellant argues that to locate filings for a mutual fund, a user
must first identify the issuer or issuers which have made filings to EDGAR
for the particular fund, relying on Waggett’s declaration testimony. (Brief
79:9-13). That, according to the Appellant, requires knowing the issuer
names beforehand, or obtaining an identifier for each issuer. (Brief 79:11-
13). During oral argument, Appellant’s counsel acknowledged that names
of issuers who have made filings for particular mutual funds are not a secret
and can be obtained simply by making a call to the mutual fund company.
(Oral Argument Transcript 25:17 to 26:9).
The declaration testimony of Waggett indicates that once the issuer
name is obtained, EDGAR can be queried using the issuer name to obtain
the Central Index Key, and that once the Central Index Key has been
obtained, EDGAR may again be queried using the Central Index Key to
obtain information filings submitted by that issuer. (Waggett Declaration
¶ 16). According to Waggett’s testimony, such a query identifies the
universe of filings in which documents relating to the mutual fund of interest
may be included. (Brief 79:23-25).
The question is whether the amount of required experimentation for
one with ordinary skill in the art to implement an information search by
CUSIP number is undue. In re Vaeck, 947 F.2d 488, 495 (Fed. Cir. 1991).
The test is not whether experimentation is necessary, but whether, if
experimentation is necessary, that experimentation is undue. In re Angstadt,
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537 F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976). Appellant has not
adequately explained why the efforts required by one with ordinary skill to
implement a mutual fund compliance information search by the fund’s
CUSIP number would have constituted undue experimentation.
Appellant has not separately argued the merits of claims 85-88 and 92
from that of claim 29, each of which depends directly or indirectly from
claim 29. Accordingly, for the foregoing reasons, Appellant has not shown
error in the determination of prima facie obviousness of claims 29, 85-88,
and 92.
Claim 32 depends on either claim 1 or claim 19 or claim 29. We
regard the rejection of claim 32 here as directed to 32/29 and not 32/19 or
32/1. Like claim 54, claim 32 it adds the limitation that the compliance
information is a subset of securities information in the one or more database
sources about the particular mutual fund which a government or exchange
requires be made available or delivered to an investor in the particular
mutual fund. In the context of claim 54 above, we have already addressed
and rejected Appellant’s argument in that regard. Accordingly, Appellant
has not shown error in the determination of prima facie obviousness of claim
32/29.
Claim 35 depends on claim 32. Appellant has not separately argued
the merits of claim 35 from that of claim 32. Accordingly, Appellant has not
shown error in the determination of prima facie obviousness of claim
35/32/29.
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U. The determination of prima facie obvious
of claim 30 over IFN, APA, and NYU

Claim 30 depends on claim 29. Appellant has not separately
argued the merits of claim 30 from that of claim 29. Accordingly,
Appellant has not shown error in the determination of prima facie
obviousness of claim 30.
V. Secondary Considerations,
Objective Evidence of Nonobviousness

Factual inquiries for an obviousness determination include secondary
considerations based on evaluation and crediting of objective evidence of
nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
Notwithstanding what the teachings of the applied prior art would have
suggested to one with ordinary skill in the art at the time of Appellant’s
invention, the totality of the evidence submitted, including objective
evidence of nonobviousness, may lead to a conclusion that the claimed
invention would not have been obvious to one with ordinary skill in the art.
In re Piasecki, 745 F.2d 1468, 1471-72 (Fed. Cir. 1984). Secondary
consideration factors include (1) unexpected results, (2) commercial success,
(3) satisfaction of long-felt need, (4) failure of others, and (5) copying by
others. E.g., Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d
281, 291 (Fed. Cir. 1985); Perkin-Elmer Corp. v. Computervision Corp.,
732 F.2d 888, 894 (Fed. Cir. 1984).
Evidence of nonobviousness must be commensurate in scope with the
claimed invention. In re Kulling, 897 F.2d 1147, 1149 (Fed. Cir. 1990); In
re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Tiffin, 448 F.2d 791,
792 (CCPA 1971) (evidence of success for cups is not commensurate in
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scope with containers). During prosecution before the USPTO, that a
species or subgenus of a claimed invention might have been nonobvious
does not equate to nonobviousness of a broader generically claimed
invention. In re Muchmore, 433 F.2d 824, 826 (CCPA 1970).
We have started over and reviewed the entirety of the evidence as a
whole. Appellant’s objective evidence of nonobviousness is weak, at best.
Appellant asserts long-felt but unresolved need, commercial success,
and copying by others. We will discuss below the assertions in that order.
In each instance, the evidence is weak.
Long-Felt but Unresolved Need
Appellant states the following with regard to the assertion of long-felt
but unresolved need (Brief 28:3-14):
As discussed above, prior to the development of the
NewRiver system, there was a recognized need in the mutual
fund industry to solve the problem of providing compliance
information electronically. NewRiver was approached by the
brokerage firm E*Trade and asked if it could devise a system to
meet the problem of electronically delivering compliance
information, as E*Trade had not been able to determine how to
do so effectively. (Fein Declaration, ¶ 3). E*Trade was not
alone, as in its search for a solution it had spoken to others who
also could not figure out how to solve the problem. (Fein
declaration, ¶¶3-4). Providing compliance information for
mutual funds was (and remains) a problem faced by a large
number of firms with significant financial resources. The
objective evidence makes clear that the problem of accurately
delivering compliance information electronically was one the
mutual fund industry was actively seeking to solve but had
failed to do so before the development of the NewRiver
solution.

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As noted above, the alleged problem was electronically delivering
mutual fund compliance information to customers. But Appellant made the
issue unclear by stating in the above-noted text that E*Trade, the company
that came to NewRiver, the real party in interest, with the request to
implement a system, “had not been able to determine how to do so
effectively.” The language suggests that it was not a problem to just
assemble and deliver mutual fund compliance information electronically.
None of the claims recite “effectively” with regard to providing mutual fund
compliance information, and if any did, it is uncertain what qualifies as
“effective.”
Also, with regard to the assertion that others in the field also had the
same problem, the supporting declaration testimony of Robert A. Fein
indicates only that E*Trade had explained its issue to at least one other
person or organization but was not convinced that that other person or entity
could provide a satisfactory solution. (Fein Declaration, ¶ 4). As presented,
that scenario is sufficiently vague to also cover the case that that other
person or entity thought it was capable of developing a satisfactory solution,
only that E*Trade itself was not persuaded. Furthermore, it is even not clear
whether that other person or entity ever did start on an actual project to
develop a solution. On the record presented, it simply has not been
established that anyone other than E*Trade had made an actual attempt to
develop a satisfactory system and failed.
More importantly, it is noted that Appellant’s involved application
was filed on February 13, 1998. In its brief, on page 8, lines 4-6, Appellant
acknowledges that in 1995, the Security Exchange Commission modified its
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regulations “to authorize” for the first time electronic delivery of compliance
information to investors. Similarly, in ¶ 2 of the Fein declaration, it is
represented that at the time of Appellant’s invention, the Security Exchange
Commission “had recently changed its rules and regulations to enable the
electronic delivery of compliance information for mutual funds and other
non-corporate securities.” Given those facts, by reasonable standards any
problem associated with implementation of a system to deliver mutual fund
compliance information electronically was not longstanding or long-felt.
There can be no legitimate need to deliver electronically mutual fund
compliance information when such delivery was not authorized by the
Security Exchange Commission as the regulating government agency.
Moreover, satisfaction of a long-felt but unresolved need is not
evidence of nonobviousness unless it is shown that “widespread efforts” of
skilled workers “having knowledge of the prior art” had failed to find a
solution to the problem. In re Allen, 324 F.2d 993, 997 (CCPA 1963). See
also Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 U.S. 350, 356
(1939); In re Mixon, 470 F.2d 1374, 1377 (CCPA 1973). We reject
Appellant’s argument that failure of others in solving the problem indicates
nonobviousness even if those who actually tried and failed were unaware of
the closest prior art. The authority cited by Appellant, Hodosh v. Block
Drug Co., Inc., 786 F.2d 1136, 1144 (Fed. Cir. 1986), does not stand for that
proposition. It is uncertain which factors of nonobviousness were involved
in Hodosh v. Block Drug Co., Inc., supra.
Also, there must be a demonstrated “nexus” between the merits of the
claimed invention and the evidence of secondary considerations before that
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evidence is accorded substantial weight in an obviousness determination.
Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739 F.2d 1573, 1575
(Fed. Cir. 1984); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539
(Fed. Cir. 1983); see also In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996);
In re Fielder, 471 F.2d 640, 642 (CCPA 1973). “Nexus” is a legally and
factually sufficient connection between the objective evidence and the
claimed invention, such that the objective evidence should be considered in
determining nonobviousness. Demaco Corp. v. F. Von Langsdorff Licensing
Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988). In the absence of an established
nexus with the claimed invention, secondary consideration factors such as
commercial success, satisfaction of a long-felt but unresolved need,
licensing and copying by others are not entitled to much, if any, weight and
generally have no bearing on the legal issue of obviousness. See In re
Vamco Machine & Tool, Inc., 752 F.2d 1564, 1577 (Fed. Cir. 1985).
Also, to be of relevance, evidence of nonobviousness must be
commensurate in scope with the claimed invention. In re Kulling, 897 F.2d
at 1149; In re Grasselli, 713 F.2d at 743; In re Tiffin, 448 F.2d at 792
(evidence of success for cups is not commensurate in scope with containers).
During prosecution before the USPTO, the applicant for patent bears
the burden of demonstrating nexus between the objective evidence of
nonobviousness and the claimed invention. In re Huang, 100 F.3d at 140;
In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994).
Appellant’s claims on appeal includes six independent claims 1, 9, 13,
19, 26, and 29, each setting forth a different combination of elements and
featuring a particular limitation which Appellant regards as rendering the
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claimed invention as a whole nonobvious. That particular limitation is
different from claim to claim and is separately argued on the merits by
Appellant. It is unexplained, let alone established, which innovation is the
underlying basis in providing a long-awaited solution to an unresolved need.
For example, Appellant does not represent that it is the feature in
claim 1 that identifies mutual fund compliance information from one
document and mutual fund compliance information from another document
and then putting together the identified information in a single computer
readable file, which solves a long-felt but unresolved need. Appellant does
not represent that it is the feature in claim 9 that extracts compliance
information for one mutual fund from one document and compliance
information for another mutual fund from a second document, which solves
a long-felt but unresolved need. Similarly, Appellant does not represent that
it is any particular feature of claims 26 and 29.
If it is the feature in dependent claim 5, which depends on claim 1, of
matching a central index key to a CUSIP number associated with a mutual
fund, where the central index key is provided by EDGAR, we have already
determined that the claim is not rendered prima facie obvious by the applied
prior art. If it is the feature in dependent claim 45, which depends on claim
1, of mapping a unique identifier for a mutual fund to a central index key,
we have already determined that the claim is not rendered prima facie
obvious by the applied art.
We have considered Appellant’s evidence and assertion of long-felt
and unresolved need. For the above-stated reasons, the evidence is weak.
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Commercial Success
As an indicia of nonobviousness, commercial success is an important
factor of secondary considerations and must always be considered when
presented. However, the alleged success must be due to the merits of the
claimed invention, In re Huang, 100 F.3d at 140, and the evidence must be
commensurate in scope with the claimed invention. In re Tiffin, 448 F.2d at
792. If the alleged commercial success is due to something more specific or
other than the particular features claimed, there would be insufficient nexus
to support patentability because the evidence would not be commensurate in
scope with what is claimed. See e.g., In re Kulling, 897 F.2d at 1149
(objective evidence must be commensurate in scope with the invention
claimed); Sjolund v. Musland, 847 F.2d 1573, 1582 (Fed. Cir. 1988)(the
lattice configuration was not claimed); In re Grasselli, 713 F.2d at 743; In re
Tiffin, 448 F.2d at 792 (commercial success for cups is insufficient to
establish commercial success for containers).
Also, it is well established that absolute sale numbers without market
share data does not establish commercial success. E.g., In re Huang, 100
F.3d at 140. Information based solely on numbers of units sold is
insufficient to establish commercial success. In re Baxter Travenol Labs,
952 F.2d 388, 392 (Fed. Cir. 1991). Absent comparative sales data such as
market share information, absolute numbers are not very meaningful. See
Vandenberg v. Dairy Equipment Co., 740 F.2d 1560, 1567 (Fed. Cir. 1984)
("appellants failed to show how sales of the patented device compared to
sales of their previous model, or what percentage of the market share their
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new model commanded."). In In re Noznick, 478 F.2d 1260, 1264 (CCPA
1973), the Court stated:
We do not think that appellant's case against a conclusion that
the invention was obvious is strengthened by the evidence of
commercial success proffered in an affidavit by Noznick, one of
the co-inventors. In it he avers that a sour cream product made
using a gum acacia coating agent enjoyed sales of over
1[,]200,000 pounds between January 1968 and July 1969.
[Footnote omitted.] These crude figures do not indicate
whether the sales came at the expense of existing products.
They are not related in any way to the total market of dried sour
cream or sour cream itself.

Appellant represents that NewRiver introduced a product in 1998
entitled “Prospectus Express®” and that from its introduction in 1998 until
November 24, 2008, it generated approximately $34.5 million in revenue.
We have no reason to doubt the revenue figure represented by
Appellant. But as noted above, such a raw number is not meaningful. Some
products are just expensive, and competitors might have sold much more
without use of Appellant’s claimed invention. By analogy, we note that a
commercial airliner likely costs more than $34.5 million dollars. If an
airliner manufacturer, over a course of ten years, generated revenue of only
$34.5 million dollars, that would be unimpressive.
There is an even more special need for market share information of
competing products when, as it is here, the market condition at the inception
was artificially influenced by governmental regulation. Prior to the Security
Exchange Commission’s authorizing electronic assembly and delivery of
mutual fund compliance information in 1995, there was no market for such a
product even if such products could have been produced. That suggests a
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large volume of sales for this type of products would have been expected
when a market was created by the Security Exchange Commission in 1995
by authorizing electronic assembly and delivery of mutual fund compliance
information. Under that circumstance, market share information of
competing products is even more important than usual. Appellant in its brief
acknowledges that there are products from multiple competitors. (Brief
30:16-19).
Accepting that Appellant generated $34.5 million dollars of revenue
from its product, we do not know how that measures up as compared to the
sales of competing products over the same period of time. We also do not
know if most of that revenue came at the beginning of the period when there
might have been few competitors simply because the Security Exchange
Commission did not authorize electronic delivery of mutual fund compliance
information until 1995. We recognize that prior to 1995 there was no
market and thus there would be no market share information. However,
market share information subsequent to 1995, such as during the ten year
period for which Appellant’s revenue figure is derived, is indisputably very
important for a meaningful assessment of commercial success. However,
Appellant did not provide such information for us to consider. We have no
reasonable basis to conclude that $34.5 million dollars worth of revenue
over a period of ten years represent substantial commercial success of the
claimed invention in the mutual fund industry. Perhaps other entities
enjoyed equal or more success with different products.
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The evidence of commercial success also suffers from a “nexus”
problem like the evidence on long-felt and unresolved need and is further
evidently not commensurate in scope with the claims as was pointed out by
the Examiner. Again, we note that the six independent claims 1, 9, 13, 19,
26, and 29 recite different features and have been separately argued by the
Appellant on patentable distinction over the prior art. Appellant does not
reveal in its brief which one or more of these features are included in its
product “Prospectus Express®” and which are not. Thus, we assume that
the product includes the distinctive features of each independent claim.
On page 31 of the appeal brief, lines 14-17, Appellant asserts that
success of the “Prospectus Express®” product flows directly from practicing
the method of claim 1. If that is true, then there is lack of nexus with respect
to independent claims 9, 13, 19, 26, and 29, which do not include the
distinctive feature of claim 1 relied on by Appellant to define over the prior
art. The evidence would not be commensurate in scope with those claims
and claims dependent thereon.
On the other hand, we are not persuaded that the alleged success of
the “Prospectus Express®” product flows directly from practicing the
method of claim 1 as opposed to from embodying the invention of the other
claims. The Appellant has provided no explanation in that regard.
Moreover, on page 10-11 of the appeal brief, Appellant focused on
explaining how the inventors overcame challenges by first mapping a fund’s
CUSIP number to associated issuer names, then using the issuer names to
identify an associated central index key, and then using the central index key
to query the database.
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According to the Appellant, such a technique “boils down” the
innumerable EDGAR filings to a subset filed by the small number of issuers
known to submit filings for the particular security of interest. (Brief 11:20-
22). Claim 1 does not include that innovative technique. But claims 5 and
45 do. Claim 5 refers to both the CUSIP and the central index key. Claim
45 refers not to the CUSIP but a unique identifier for a mutual fund, and
refers to the central index key. It is simply not explained by Appellant why
the alleged commercial success is not due to the merits of the innovation
recited in claims 5 and 45, which is significant according to Appellant’s own
brief. The same is true with respect to the separately argues features of
independent claims 13, 19, and 29.
We agree with Appellant that the product sold does not necessarily
have to be commensurate in scope with each claim for which Appellant
relies on commercial success as objective indicia of nonobviousness. A
commercial product undoubtedly includes a myriad of other parts and
features which may not have any significance. However, the same cannot be
said for those features and parts which Appellant relies on to establish
patentable distinction over the prior art, which are innumerable in this case.
On this record, it simply cannot be determined that commercial
success, if any, was due to the features claimed, with respect to any one
rejected claim. See, e.g., In re Sneed, 218 USPQ 385, 390 (Fed. Cir. 1983)
(It is impossible to ascertain to what extent practice of the claimed invention
was responsible for the applicant's success.).
As a matter of claim interpretation, we have also already rejected
Appellant’s contention that only accurate and up-to-date compliance
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information can satisfy claim 1’s recitation of compliance information.
Even assuming that sales of the product were made because the product
produces only accurate and up-to-date compliance information for mutual
funds, that is not commensurate in scope with what has been claimed. In
that connection, we note that no definitive yardstick has been set forth in the
specification to define when to classify mutual fund compliance information
as “accurate.” It is uncertain just how accurate must accurate be. Appellant
makes no representation that the invention of any of its claims produces the
entire universe of the desired mutual fund compliance information, not one
item more and not one item less, and which is up-to-date all the time.
We have considered Appellant’s evidence and assertion of long-felt
and unresolved need. For the above-stated reasons, the evidence is weak.
Alleged Copying by Others
Appellant asserts that its claimed invention has been copied by others.
Copying, however, is difficult to prove as an objective indicia of
nonobviousness, because it is one of those secondary consideration factors
which can cut both ways. In Cable Electric Products, Inc. v. Genmark, Inc.,
770 F.2d 1015, 1028 (Fed. Cir. 1985), the Court of Appeals for the Federal
Circuit stated:
Even widespread copying could weigh toward opposite
conclusions, depending on the attitudes existing toward patent
property and the accepted practices in the industry in question.
It is simplistic to assert that copying per se should bolster the
validity of a patent.

Assuming that others have “copied” the “Prospectus Express®” product,
Appellant has not shown that they generally respected Appellant’s patent
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rights or that they voluntarily took a license without threat of litigation.
Infringement also does not establish copying. As is stated by the
Court of Appeals for the Federal Circuit in Iron Grip Barbell Co., Inc. v.
USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004):
Not every competing product that arguably falls [sic] within the
scope of a patent is evidence of copying. Otherwise every
infringement suit would automatically confirm the
nonobviousness of the patent. Rather, copying requires the
replication of a specific product. [Emphasis added.]

On page 33 of its brief, in lines 19-21, Appellant states that several
competitors sought to copy its solution but provides no citation to the record.
On the same page, in lines 26-29, Appellant states that a particular entity,
i.e., the reexamination requestor, copied its solution, and again cites to no
supporting evidence. Moreover, as has been stated by the Federal Circuit in
Iron Grip Barbell Co., supra, copying requires the replication of a specific
product, not just a conceptual solution the identity of which is not
specifically defined. The evidence Appellant does cite to on page 33 of the
appeal brief indicates that the reexamination requestor obtained no fewer
than six legal opinions which concluded that there would be no infringement
of Appellant’s issued patent. Appellant sued for infringement and the
litigation terminated without a judgment holding that any claim was
infringed. Appellant has not established even infringement, much less
copying of its “Prospectus Express®” product.
On page 34 of its appeal brief, in lines 13-16, Appellant states:
Once Newkirk [Newkirk Products, Inc.] and Mobular [Mobular
Technologies, Inc.] recognized that NewRiver had solved the
compliance challenge using data that was publicly available,
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they each began extensive efforts to copy the approach patented
by NewRiver, rather than formulate their own. (Barzilay
Declaration, ¶ 3-5).

Again, Appellant refers to copying of some “approach” the identity of
which is not specifically defined rather than an actual product. We have
reviewed the cited declaration paragraphs and find that they do not support a
determination that either Newkirk or Mobular copied Appellant’s product.
On page 34 of its brief, in lines 3-7, Appellant states that Mobular
“sought to copy its [Appellant’s] business model and replicate its
[Appellant’s] system, citing paragraphs 3 and 4 of the Barzilay declaration.
At the outset, we note that a desire to copy another’s general business model
is not the same as actually having copied a specific product. Also, we have
reviewed the cited declaration paragraphs as well as Exhibits A and B
attached thereto. The evidence does not support the assertion that Mobular
tried to replicate Appellant’s product. Rather, the evidence indicates that
Mobular was contemplating developing a new system to replicate
Appellant’s business and that the developed system “may” infringe or have
the appearance of infringing one or more claims of Appellant’s patent.
On this record, Appellant simply has not shown that any entity copied
Appellant’s “Prospectus Express®” product. Even if anyone did “copy” the
product, there would be insurmountable problems for the Appellant on the
issue of nexus and whether the evidence is commensurate in scope with
what has been claimed, as we have already discussed above in connection
with alleged commercial success and long-felt but unresolved need.
We have considered Appellant’s evidence and assertion of copying by
others. For the above-stated reasons, the evidence is weak.
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W. Considering Entirety of the Evidence
After considering whether the Examiner has made out a prima facie
case of obviousness, we have started over to review the entirety of the
evidence as a whole with regard to those claims with respect to which the
Examiner has established prima facie obviousness. Given that Appellant’s
objective evidence on long-felt but unresolved need, commercial success,
and copying by others is at best weak for reasons discussed above, the
evidence as a whole firmly weighs on the side of and amply supports a
conclusion of obviousness with respect to claims 1-4, 8-12, 26-31, 32/1,
32/29, 33, 34, 35/32/1, 35/32/29, 36-44, 51-66, 78, 79, 81-88, and 92.
DECISION
The rejection of claims 51, 52, 66-71, 77, 82, 83, and 92 under
35 U.S.C. § 305 for impermissibly enlarging the scope of an issued patent
claim is reversed.
The rejection of claims 67-71 under 35 U.S.C. § 112, second
paragraph, as indefinite is affirmed.
The rejection of claim 63 under 35 U.S.C. § 112, second paragraph, as
indefinite is reversed.
The rejection of claims 1-4, 8, 9, 26, 27, 31, 32/1, 33, 34, 35/32/1, 36-
40, 42, 44, 51-57, 59-66, 78, 79, and 81-83 under 35 U.S.C. § 103 as
obvious over IFN and APA is affirmed.
The rejection of claim 80 under 35 U.S.C. § 103 as obvious over IFN
and APA is reversed.
The rejection of claim 43 under 35 U.S.C. § 103 as obvious over IFN,
APA, and EDGARSCAN is affirmed.
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The rejection of claims 5 and 45 under 35 U.S.C. § 103 as obvious
over IFN, APA, and NYU is reversed.
The rejection of claim 41 under 35 U.S.C. § 103 as obvious over IFN,
APA, and NYU is affirmed.
The rejection of claim 6 under 35 U.S.C. § 103 as obvious over IFN,
APA, NYU, and Cwenar is reversed.
The rejection of claim 7 under 35 U.S.C. § 103 as obvious over IFN,
APA, NYU, Cwenar, and an example SEC filing is reversed.
The rejection of claim 58 under 35 U.S.C. § 103 as obvious over IFN,
APA, and the Validation Book is affirmed.
The rejection of claims 10 and 12 under 35 U.S.C. § 103 as obvious
over IFN, APA, and the LookSmart Article is affirmed.
The rejection of claim 11 under 35 U.S.C. § 103 as obvious over IFN,
APA, the LookSmart Article, and the Validation Book is affirmed.
The rejection of claims 13, 14, 17, 67, 68, 69, and 71 under 35 U.S.C.
§ 103 as obvious over IFN and Word Perfect Mini Manual is reversed.
The rejection of claim 70 under 35 U.S.C. § 103 as obvious over IFN,
Word Perfect 5.1 Mini Manual, and EDGARSCAN is reversed.
The rejection of claims 15 and 16 under 35 U.S.C. § 103 as obvious
over IFN, APA, and Word Perfect 5.1 Mini Manual is reversed.
The rejection of claim 18 under 35 U.S.C. § 103 as obvious over IFN,
Word Perfect 5.1 Mini Manual, and the Validation Book is reversed.
The rejection of claims 19, 20, 23, 24, 32/19, 35/32/19, and 77 under
35 U.S.C. § 103 as obvious over IFN and Word Perfect 5.1 Mini Manual is
reversed.
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The rejection of claims 21 and 22 under 35 U.S.C. § 103 as obvious
over IFN, APA, and Word Perfect 5.1 Mini Manual is reversed.
The rejection of claim 25 under 35 U.S.C. § 103 as obvious over IFN,
Word Perfect 5.1 Mini Manual, and the Validation Book is reversed.
The rejection of claim 84 under 35 U.S.C. § 103 as obvious over IFN,
APA, and EDGARSCAN is affirmed.
The rejection of claim 28 under 35 U.S.C. § 103 as obvious over IFN,
APA, and NYU is affirmed.
The rejection of claims 29, 32/29, 35/32/29, 85-88, and 92 under 35
U.S.C. § 103 as obvious over NYU and APA is affirmed.
The rejection of claim 30 under 35 U.S.C. § 103 as obvious over IFN,
APA, and NYU is affirmed.
Summary
The rejection of claims 1-4, 8-12, 26-31, 32/1, 32/29, 33, 34, 35/32/1,
35/32/29, 36-44, 51-71, 78, 79, 81-88, and 92 is affirmed.
The rejection of claims 5-7, 13-25, 32/19, 35/32/19, 45, 77, and 80 is
reversed.
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRM-IN-PART

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PATENT OWNER:

GREENBERG TRAURIG (NY)
MET LIFE BUILDING
200 PARK AVENUE
NEW YORK, NY 10166

THIRD PARTY REQUESTER:

NEWKIRK PRODUCTS INC.
15 CORPORATE CIRCLE
ALBANY, NY 12203