Ex Parte 6349291 et al

Patent Trial and Appeal BoardMar 27, 2015

95001939 (P.T.A.B. Mar. 27, 2015)

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. 95/001,939 03/29/2012 6349291 206801-14000-100 7624 16579 7590 03/30/2015 Foster Pepper PLLC 1111 3rd Avenue Suite 3400 Seattle, WA 98101-3299 EXAMINER SAGER, MARK ALAN ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 03/30/2015 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ IBM, SAS, and ALGORITHMICS INC. Requester and Respondent v. INVESTPIC, LLC Patent Owner and Appellant ____________________ Appeal 2015-001450 Reexamination Control 95/001,939 Patent US 6,349,291 B1 Technology Center 3900 ____________ Before JOHN A. JEFFERY, ERIC B. CHEN, and ANDREW J. DILLON, Administrative Patent Judges. DILLON, Administrative Patent Judge DECISION ON APPEAL Appeal 2015-001450 Reexamination Control 95/001,939 Patent US 6,349,291 B1 2 STATEMENT OF THE CASE Owner appeals under 35 U.S.C. § 134(b) (2002) from the final decision of the Examiner adverse to the patentability of claims 1-5, 8-16, 19- 21, and 29-31. We have jurisdiction under 35 U.S.C. § 315 (2002). We affirm. Invention The '291 patent describes a method and system for the statistical analysis, display and dissemination of financial data over an information network such as the Internet and World Wide Web. Abstract. Claims Claims 1-5, 8-16, 19-21 and 29-31 are subject to reexamination and have been rejected. Claims 1-31 are original patent claims. Claims 7, 18, and 22-28 are not subject to reexamination. Claims 6 and 17 are deemed patentable. Claims 1, 11, and 29 are independent. Claims 1, 11, and 29 are illustrative. 1. A method for calculating, analyzing and displaying investment data comprising the steps of: (a) selecting a sample space, wherein the sample space includes at least one investment data sample; (b) generating a distribution function using a re-sampled statistical method and a bias parameter, wherein the bias parameter determines a degree of randomness in sample selection in a resampling process; and, (c) generating a plot of the distribution function. Appeal 2015-001450 Reexamination Control 95/001,939 Patent US 6,349,291 B1 3 11. A method for providing statistical analysis of investment data over an information network, comprising the steps of: (a) storing investment data pertaining to at least one investment; (b) receiving a statistical analysis request corresponding to a selected investment; (c) receiving a bias parameter, wherein the bias parameter determines a degree of randomness in sample selection in a resampling process; and, (d) based upon investment data pertaining to the selected investment, performing a resampled statistical analysis to generate a resampled distribution. 29. A system for providing statistical analysis of investment information over an information network comprising: a financial data database for storing investment data pertaining to two or more investments; a front end subsystem for receiving a statistical analysis request corresponding to two or more selected investments: a parallel processor, wherein the parallel processor includes: at least one processor for performing resampled statistical analysis based upon the statistical analysis request. Prior Art Sortino, Frank, A., "The Look of Uncertainty," 4(1) Investing 30-34 (Winter 1990) ("Sortino"); Efron, B., "Bootstrap Methods: Another Look at the Jackknife, " 7(1) The Annals of Statistics 1-26 (Jan. 1979) ("Efron"); Appeal 2015-001450 Reexamination Control 95/001,939 Patent US 6,349,291 B1 4 Barraquand, Jerome, "Monte Carlo integration, quadratic resampling, and asset pricing," 38 Mathematics and Computers in Simulation173-182 (1995) ("Barraquand "); Stewart, G. W., "Parallel Linear Algebra in Statistical Computations," COMSTAT '88 Proceedings in Computational Statistics, pp. 3-14 (1998) ("Stewart"); Kaufman, L., "Using a Parallel Computer System for Statistical Resampling Methods," 2Computational Statistics Quarterly 129-141 (1988) ("Kaufman"). Owner’s Contentions Owner contends that the Examiner erred in entering the following grounds of rejections against claims 1-5, 8-16, 19-21 and 29-31 (App. Br. 3): 1. The rejection of claims 1-5, 10-16, 19, and 21 under 35 U.S.C. §102(b) as being anticipated by Sortino 1 ; 2. The rejection of claims 8 and 9 under 35 U.S.C. §103(a) as being unpatentable over Sortino in view of Efron; 3. The rejection of claim 20 under 35 U.S.C. §103(a) as being unpatentable over Sortino in view of Admitted Prior Art; 4. The rejection of claim 29 under 35 U.S.C. §102(b) as being anticipated by Barraquand 2 ; 1 Owner’s Appeal Brief mistakenly lists claims 1-5, 10-16, 19, and 21 and as rejected under “103(a) as being anticipated by Sortino” which we consider to be harmless typographical error. 2 Owner’s Appeal Brief mistakenly lists claim 29 as rejected under “103(a) as being anticipated by Barraquand” which we consider to be harmless typographical error. Appeal 2015-001450 Reexamination Control 95/001,939 Patent US 6,349,291 B1 5 5. The rejection of claim 30 under 35 U.S.C. §103(a) as being unpatentable over Barraquand in view of admitted prior art; 6. The rejection of claim 31 under 35 U.S.C. §103(a) as being unpatentable over Barraquand in view of Stewart; 7. The rejection of claim 29 under 35 U.S.C. §103(a) as being unpatentable over Kaufman in view of Sortino; 8. The rejection of claim 30 under 35 U.S.C. §103(a) as being unpatentable over Kaufman in view of Sortino and further in view of admitted prior art; 9. The rejection of claim 31 under 35 U.S.C. §103(a) as being unpatentable over Kaufman in view of Sortino and further in view of Stewart. ANALYSIS Owner initially argues the Examiner’s rejection of claims 1-5, 8-16, 19-21, and 29-31 was improper, based upon four arguments. Owner first argues that none of the cited references shows or suggests “a bias parameter that determines a degree of randomness in sample selection in a resampling process.” Next, Owner argues that none of the cited references show or suggest “a statistical analysis request that corresponds to two or more investments, and a resampled statistical analysis performed based upon investment data pertaining to two or more investments.” Thirdly, Owner argues that none of the cited references show or suggest “a plurality of processors collectively arranged to perform a parallel processing computation and adapted to receive a statistical analysis request Appeal 2015-001450 Reexamination Control 95/001,939 Patent US 6,349,291 B1 6 corresponding to two or more selected investments.” Finally, Owner argues that the Examiner “failed to give legally sufficient consideration or weight to the expert evidence in his reasoning and analysis.” App. Br. 4-19. Requester argues that Sortino discloses a “bias parameter” that “determines a degree of randomness in sample selection” by at least, restricting the data to be sampled to certain economic scenarios (e.g. recessions, growth, inflation, etc.). Req. Resp. Brief 1-2. We find that Sortino teaches the application of bias after an initial selection by application of the various enumerated scenarios, noted above. We, therefore, find that Sortino shows or suggests the “bias parameter that determines a degree of randomness in sample selection in a resampling process” set forth in claims 1 and 11. We also note that claim 29 fails to recite the argued “bias parameter.” With regard to Owner’s arguments pertaining to “two or more investments” Requester cites numerous instances within the Sortino reference which refer to “each asset” when discussing uncertainty, return characteristics and the like. Similarly, Requester points out that Sortino discloses a bootstrap analysis of S & P 500 data as “merely one exemplary investment” which includes “nine asset categories.” Req. Resp Brief 7. Further, Requester argues that Owner has improperly read a temporal limitation into claim 29 by urging that the claim should be interpreted to require an analysis of the claimed “two or more assets” at a time. Requester finds that claim 29 does not require any simultaneous analysis of two or more investments. Id. at 8. Appeal 2015-001450 Reexamination Control 95/001,939 Patent US 6,349,291 B1 7 We agree with Requester and the Examiner. The absence of a temporal limitation from Owner’s claims indicating that “two or more investments” are analyzed at the same time leads us to conclude that Sortino suggests the ability to analyze “two or more investments.” Regarding Owner’s argument that two requests would be necessary in the Sortino system to accomplish an analysis of “two or more investments,” we note that Owner utilizes the transitional term “comprising.” "The transitional term 'comprising' . . . is inclusive or open-ended and does not exclude additional, unrecited elements or method steps." Georgia-Pacific Corp. v. U.S. Gypsum Co., 195 F.3d 1322, 1327-28 (Fed. Cir. 1999) (citing MPEP § 2111.03 (6th ed.1997)). "A drafter uses the term 'comprising' to mean 'I claim at least what follows and potentially more.'" Vehicular Techs. Corp. v. Titan Wheel Int'l, Inc., 212 F.3d 1377, 1383 (Fed. Cir. 2000). Further, Owner’s claim recites “a statistical analysis request.” “[A]n indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of 'one or more' in open-ended claims containing the transitional phrase ‘comprising.’” KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000). To be sure, “[w]hen the claim language and specification indicate that ‘a’ means one and only one, it is appropriate to construe it as such even in the context of an open-ended ‘comprising’ claim.” Harari v. Lee, 656 F.3d 1331, 1341 (Fed. Cir. 2011). But that exception is not the case here, nor has Owner shown as much on this record. Consequently, we find that a system such as that disclosed by Sortino, that may utilize multiple “requests” to analyze “two or more investments,” shows or suggests the claimed feature. Appeal 2015-001450 Reexamination Control 95/001,939 Patent US 6,349,291 B1 8 We also note that only claim 29 recites the argued “two or more investments” argued above. Addressing Owner’s arguments regarding “a plurality of processors collectively arranged to perform a parallel processing computation and adapted to receive a statistical analysis request corresponding to two or more selected investments” Requester points out that Kaufman discloses the use of the IBM LCAP parallel computer system that functions as a “front end subsystem” for receiving a statistical analysis request. Req. Resp. Br. 9. The Examiner finds that Kaufman is indeed analogous art and would have been obvious to one of ordinary skill in the art in combination with Sortino to show or suggest parallel processing of a statistical analysis request for two or more selected investments. RAN 17-18. We concur with the Examiner. The benefits and advantages of parallel processing were well known to those of ordinary skill in the art at the time of the invention and the combination of Kaufman with Sortino was clearly within the ordinary skill level of persons in this art. Again, we note that only claim 29 recites the use of parallel processing. As for the alleged failure of the Examiner to adequately consider the expert declarations, the Requester argues that “full, fair, and careful consideration” was given to the declarations of Owner’s expert declarations but notes that the declarations “almost entirely ignore” the content of the rejected claims and mostly address irrelevant issues unrelated to the '291 patent claims, offering opinions and anecdotes on topics ranging from risk management, to portfolio theory, to computational complexity, to statistical paradigms, to the ‘holy war’ Appeal 2015-001450 Reexamination Control 95/001,939 Patent US 6,349,291 B1 9 between Bayesian and frequentist statisticians, and to other subjects having nothing to do with what is actually recited in the claims. Req. Resp. Br. 14. The Examiner notes that Owner’s expert declarations lacked factual support to be persuasive “since they improperly import disclosed features from '291 into their analysis.” RAN 22. Consequently, we find the Examiner properly considered all of the objective evidence submitted by Appellant and found such evidence, including expert declarations, not to be persuasive. Owner also specifically argues that the Examiner erred in rejecting claim 10 “because Sortino fails to teach maximum drawdown or monitor functions.” App. Br. 20-21. In the Original Reexamination Request, Requester asserts that Sortino discloses “determining a return rate function” for the sampled investments and also discloses monitoring the results (a monitor function). Issue 1, Req. Reexam. 29. The Examiner adopted Issue 1, as noted in the RAN, at page 25-26. We find that the return rate function of Sortino clearly suggests the ability to determine a maximum drawdown capacity of an analyzed investment, in view of a broadest reasonable definition of “drawdown capacity.” Similarly, a “monitor” function is expressly disclosed. Therefore we find the Examiner did not err in rejecting claim 10. Owner also argues that Efron, Barraquand and Stewart, either alone or in conjunction with the Admitted Prior Art, all fail to disclose the “missing Bias Parameter.” App. Br. 22-25. Appeal 2015-001450 Reexamination Control 95/001,939 Patent US 6,349,291 B1 10 For the reasons we set forth above in our analysis of Sortino, we find that the claimed “Bias Parameter” was clearly shown or suggested by Sortino and consequently we decline to address this argument. Next, Owner argues Kaufman and Sortino fail to disclose “a statistical analysis request corresponding to two or more selected investments” and “performing resampled statistical analysis based upon the statistical analysis request” and that a person of ordinary skill would not have been motivated to combine Kaufman and Sortino. App. Br. 25-26, 28. We have addressed the issue of “two or more selected investments” above. With regard to the combination of Kaufman and Sortino, Requester points out that Kaufman is analogous art under the two criteria which have evolved for answering that question: (1) it is in the same field of endeavor, and, (2) it is reasonably pertinent to the problem addressed by the ‘291 patent. See In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). The Examiner agreed with the Requester. We agree with the Examiner for the reasons set forth above. Finally, Owner argues the Examiner erred since Sortino fails to disclose a “database” as Sortino merely discloses “a text file with a single column of numbers” which “has no key or index.” App. Br. 30. Sortino, at page 31, discloses a table of S&P 500 Distributions from 1960 to 1988. We consider that description to encompass a “database” within the ordinary meaning of that term. As for the lack of a “key” or “index,” we find those terms are not utilized within the claims. Consequently we agree with the Examiner’s application of Sortino to claims 1-5, 8-16, 19- Appeal 2015-001450 Reexamination Control 95/001,939 Patent US 6,349,291 B1 11 21 and 29-31, as noted in Grounds of Rejection 1-3 and 7-9 set forth above. As this finding is dispositive for all claims we do not reach the Examiner’s alternative Grounds of Rejection 4-6. DECISION The Examiner’s decision adverse to the patentability of claims 1-5, 8- 16, 19-21 and 29-31 is affirmed. Requests for extensions of time in this proceeding are governed by 37 C.F.R. §§ 1.956 and 41.79(e). AFFIRMED Appeal 2015-001450 Reexamination Control 95/001,939 Patent US 6,349,291 B1 12 ack Patent Owner: FOSTER PEPPER PLLC 1111 3RD AVENUE SUITE 3400 SEATTLE, WA 98101-3299 Third Party Requester: JOHN V. BIERNACKI JONES DAY 901 LAKESIDE AVENUE CLEVELAND. OH 44114