Ex Parte Barton et al

Patent Trial and Appeal Board

Dec 15, 2015

13895019 (P.T.A.B. Dec. 15, 2015)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/895,019 05/15/2013
11850 7590 12/17/2015
DENTONS US LLP (Sophir-All Others)
ATTN: Eric Sophir
P.O. BOX 061080
CHICAGO, IL 60606-1080
FIRST NAMED INVENTOR
Samuel G. Barton
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
PLUOOOl-US-CON 1897
EXAMINER
BROMELL, ALEXANDRIA Y
ART UNIT PAPER NUMBER
2167
NOTIFICATION DATE DELIVERY MODE
12/17/2015 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
eric.sophir@dentons.com
SG.Sophir.AllOthers@dentons.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMUEL G. BARTON, BHALCHANDRA R. KETKAR,
CASEY V. O'HARA, and TODD GOLDWASSER
Appeal2015-008308
Application 13/895,019
Technology Center 2100
Before JOHN A. EV ANS, CATHERINE SHIANG, and
KAMRAN JIVANI, Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of Claims 1-13, 17-24, and 29. Claims 14--16
and 25-28 were indicated as allowable. App. Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b ).
We REVERSE.
1 The Appeal Brief identifies Plutopian Corporation as the real party in
interest. App. Br. 1.
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Application 13/895,019
STATEMENT OF THE CASE
The claims relate to a method of compiling a database of investor-
related data where investor-related data are linked without revealing the
identity of an investor. See Abstract.
Claim 1 is the only independent claim. An understanding of the
invention can be derived from a reading of Claim 1, which is reproduced
below with disputed limitations italicized and some formatting added:
1. A method of compiling a computerized database of
anonymized investor-specific financial data received from a
plurality of data providers, the method comprising:
inputting, using a computer and from each data provider,
a set of data comprising:
investor-specific financial data maintained by the data
provider pertaining to a plurality of investors, and
with respect to each investor, a surrogate investor code
that is associated with the investor-specific financial data
pertaining to that investor,
wherein the surrogate investor code corresponds to a
single value of an investor identifier maintained by the data
provider in association with that investor-specific financial data,
wherein the surrogate investor codes inputted from all
data providers correspond to values of the same investor
identifier,
wherein each distinct value of the investor identifier
represents a distinct investor,
wherein the set of data from each data provider does not
disclose the values of the investor identifier, and
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wherein the surrogate investor code inputted from a data
provider that corresponds to a particular value of the investor
identifier is different from the surrogate investor codes inputted
from other data providers that correspond to that value of the
investor identifier;
determining, using a computer and based upon a data-
matching mechanism, which surrogate investor codes
correspond to the same value of the investor identifier,
wherein the data-matching mechanism does not disclose
the values of the investor identifier; and
linking in the database, using a computer, investor-specific
financial data inputted in association with surrogate investor
codes that correspond to the same value of the investor
identifier.
References and Rejections
The Examiner relies upon the prior art as follows:
Everett US 2004/0024790 Al
US 2009/0271617 Al
Feb. 5,2004
Oct. 29, 2009 Song
The claims stand rejected as follows: 2
1. Claims 1-13, 17-24, and 29 stand rejected under pre-AIA 35 U.S.C.
§ 102( e) as anticipated by Song. Final Act. 4--11.
2 Based on Appellant's arguments in the Appeal Brief, we will decide the
appeal on the basis of claims as set forth below. See 37 C.F.R. §
41.37( c )(1 )(vii).
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Application 13/895,019
2. Claims 17-24 stand rejected under pre-AIA 35 U.S.C. § 102(e) as
obvious over Song and Everett. Final Act. 11-17.
ANALYSIS 3
We have reviewed the rejections of Claims 1-13, 17-24, and 29 in
light of Appellants' arguments that the Examiner has erred. We agree with
Appellants' conclusions.
CLAIMS 1-13, 17-24, AND 29 ANTICIPATION BY SONG
Appellants argue these claims as a group and specifically argue Claim
1. App. Br. 7. We therefore limit our discussion to Claim 1. See 37 C.F.R.
§ 41.37(c)(l)(vii) (2007).
Appellants contend that Song does not disclose "wherein the surrogate
investor code inputted from a data provider that corresponds to a particular
value of the investor identifier is different from the surrogate investor codes
inputted from other data providers that correspond to that value of the
investor identifier," as recited in Claim 1. App. Br. 3. Appellants argue that
in each case, the financial institutions agree to use the same transformation
algorithm, thus ensuring that matching identity codes are generated by each
institution. App. Br. 6.
3 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed April 20, 2015, "App. Br."), the Reply Brief
(filed September 17, 2015, Reply Br."), the Examiner's Answer (mailed July
17, 2015, "Ans."), the Final Action (mailed July 2, 2014, "Final Act."), and
the Specification (filed May 15, 2013, "Spec.") for the respective details.
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Application 13/895,019
The Examiner finds that separate financial institutions apply different
forms of two-key encryption to create different surrogate investor codes for
the same investor. Thus, assuming each bank applies a different public key
to the same investor identifier, a different surrogate investor code will be
generated by each bank for the same investor. Ans. 17-18 (citing Song i-f
23).
Appellants' Reply contends that the Examiner's Answer shifts the
grounds of rejection. Reply Br. 4. We agree. The Answer, but not the Final
Action, cites Song, paragraph 23; whereas the Final Action, but not the
Answer, cites Song, paragraphs 5, 19, 20, 39, 40, 41, 48, and 49. See Ans.
17; Final Act. 2-5.
Appellants re-allege their contention that the claims require that each
financial institution must generate different surrogate investor codes, but in
contrast, Song requires that the financial institutions derive the same shared
identity codes:
[ t Jo make sure that every financial institution can easily follow
the same encoding and/or encryption method to derive the
shared identity code from the customer's private identification
information, so that the matching process can be effectively
performed, the present invention preferably uses a
computerized method to prompt users to precisely follow the
rules of encoding and/ or encryption, or otherwise standardize
and automate the process such that the same identification
information will be encoded and encrypted in a consistent
manner to produce the same results regardless of which user
[i.e., financial institution] peiformed the encoding and/or
encryption.
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Appeal2015-008308
Application 13/895,019
Reply Br. 9 (citing Song i-f 27).
For the reasons discussed above by Appellants, we find that Song
does not disclose:
wherein the surrogate investor code inputted from a data
provider that corresponds to a particular value of the investor
identifier is different from the surrogate investor codes inputted
from other data providers that correspond to that value of the
investor identifier,
as recited in Claim 1. Therefore, we decline to sustain the rejection of
Claims 1-13, 17-24, and 29.
CLAIMS 17-24 OBVIOUSNESS OVER SONG AND EVERETT
Appellants contend Claims 1 7-24 are allowable in view of their
dependence from Claim 1. App. Br. 7. The Examiner finds Claims 17-24
are "properly rejected based on the rejection of claim 1." Ans. 18. In view
of the foregoing discussion, we decline to sustain the rejection of Claims 17-
24.
DECISION
The rejection of Claims 1-13, 17-24, and 29 under 35 U.S.C. § 102 is
REVERSED.
The rejection of Claims 17-24 under 35 U.S.C. § 103 is REVERSED.
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PS
REVERSED
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