Ex Parte Boyda et al

Patent Trial and Appeal BoardApr 11, 2016

13272022 (P.T.A.B. Apr. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/272,022 10/12/2011 24280 7590 04/13/2016 CHOATE, HALL & STEW ART LLP TWO INTERN A TI ON AL PLACE BOSTON, MA 02110 FIRST NAMED INVENTOR Robert Boyda 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. 2004159-0027 8900 EXAMINER HAMILTON, LALITA M ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 04/13/2016 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): patentdocket@choate.com jnease@choate.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT BOYDA, PAUL T. KANE, LEO ZERILLI, JOHN VRYSEN, CHRIS HURLEY, and DAVID P. CHOATE Appeal2013-009734 1 Application 13/272,0222 Technology Center 3600 Before ANTON W. PETTING, NINA L. MEDLOCK, and TARA L. HUTCHINGS, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL 1 Our decision references Appellants' Appeal Brief ("App. Br.," filed February 13, 2013) and Reply Brief ("Reply Br.," filed July 23, 2013), and the Examiner's Answer ("Ans.," mailed May 23, 2013) and Final Office Action ("Final Act.," mailed August 16, 2012). 2 Appellants identify John Hancock Advisors, Inc.as the real party in interest. App. Br. 2. Appeal2013-009734 Application 13/272,022 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1-3, 5-17, 19-26, 28-35, and 38--46. We have jurisdiction under 35 U.S.C. Â§ 6(b).3 We REVERSE. CLAIMED INVENTION Appellants' claimed invention "relates to systems and methods that are used in portfolio rebalancing to support an investment strategy," and more specifically, "to systems and methods for rebalancing portfolio holdings of fund of funds [sic] to meet investment strategy goals or merger of funds, or the transfer of assets between funds" (Spec. i-f 2). Claim 1, reproduced below, is illustrative of the subject matter on appeal: 1. A method, comprising: (A) selecting, by a computer, a first security holding entity securities holdings for reinvestment in at least securities holdings of a second security holding entity; (B) redeeming, by a computer, securities holdings held by the first security holding entity to obtain redemption proceeds, wherein the securities holdings are redeemed according to an investor's pro rata ownership share of the first security holding entity based on the investor's investment in the first security holding entity, and wherein at least a portion of the securities holdings are redeemed in-kind; (C) selecting, by a computer, the second security holding entity in which to reinvest the redemption proceeds and obtaining a target list of securities holdings intended to be held by the second security holding entity; 3 Claim 27 is cancelled. 2 Appeal2013-009734 Application 13/272,022 (D) comparing, by a computer, the redemption proceeds with the target list for matching securities quantities and performing transactions to substantially reposition the redemption proceeds to the securities holdings on the target list according to transaction preferences; and (E) contributing, by a computer, to the second security holding entity the redemption proceeds that have been repositioned and remaining transferable assets after completion of the transactions, and the second security holding entity transferring to the investor the investor's pro rata ownership interest in the second security holding entity based on the redemption proceeds that have been repositioned and the remaining transferable assets. REJECTIONS Claims 1-3, 5-17, 19-26, 28-35, and 38--46 are rejected under 35 U.S.C. Â§ 102(e) as anticipated by Gastineau (US 2007/0027790 Al, pub. Feb. 1, 2007).4 ANALYSIS Appellants argue that the Examiner erred in rejecting independent claims 1, 15, 24, 34, 41, and 42 because Gastineau does not disclose rebalancing a portfolio of security holdings using in-kind redemption of securities, i.e., "redeeming ... securities holdings held by the first security holding entity to obtain redemption proceeds ... wherein at least a portion of the securities holdings are redeemed in-kind" and "comparing ... the redemption proceeds with the target list [of securities holdings intended to be held by the second security holding entity] for matching securities 4 We treat the Examiner's reference to cancelled claim 27 as inadvertent error. 3 Appeal2013-009734 Application 13/272,022 quantities and performing transactions to substantially reposition the redemption proceeds to the securities holdings on the target list," as recited in claim 1 and similarly recited in independent claims 15, 24, 34, 41, and 42 (App. Br. 13-14). In the Final Office Action, the Examiner reproduces the language of each of independent claims 1, 15, 24, 34, 41, and 42, and cites paragraphs 4, 9, 10, 32, 48, and 60 of Gastineau, without any accompanying explanation or narrative, as disclosing all of the limitations of the claims (Final Act. 2-3, 6- 9, 11, and 13-15). Responding in the Answer to Appellants' argument that Gastineau does not disclose rebalancing a portfolio of security holdings using in-kind redemption of securities (i.e., "redeeming ... securities holdings held by the first security holding entity to obtain redemption proceeds ... wherein at least a portion of the securities holdings are redeemed in-kind" and "comparing ... the redemption proceeds with the target list [of securities holdings intended to be held by the second security holding entity] for matching securities quantities and performing transactions to substantially reposition the redemption proceeds to the securities holdings on the target list," as recited in claim 1 and similarly recited in independent claims 15, 24, 34, 41, and 42 (App. Br. 13-14)), the Examiner asserts that paragraphs 48 and 49 of Gastineau disclose a rebalancing method, as disclosed in Appellants' Specification (Ans. 19-22 (citing Spec. i-fi-13--4, 11)). However, as Appellants observe, the Examiner does not explain where or how Gastineau discloses repositioning redemption proceeds based on a target list of holdings intended to be held by a security holding entity or contributing the repositioned redemption proceeds to a 4 Appeal2013-009734 Application 13/272,022 security holding entity in exchange for the investor's pro rata ownership interest in the security holding entity, as called for in the independent claims. The Examiner has failed to establish a prima facie case of anticipation. Therefore, we do not sustain the Examiner's rejection of independent claims 1, 15, 24, 34, 41, and 42. For the same reasons, we also do not sustain the Examiner's rejection of claims 2, 3, 5-14, 16, 17, 19-23, 25, 26, 28-33, 35, 38--40, and 43--46, each of which depends, directly or indirectly, from one of independent claims 1, 15, 24, 34, and 42. DECISION The Examiner's rejection of claims 1-3, 5-17, 19-26, 28-35, and 38- 46 under 35 U.S.C. Â§ 102(e) is reversed. REVERSED 5