Ex Parte 6349291 et al

Patent Trial and Appeal Board

Feb 1, 2017

90012366 (P.T.A.B. Feb. 1, 2017)

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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
206801-14001-100 4278
EXAMINER
SAGER, MARK ALAN
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
90/012,366 06/21/2012 6349291
16579 7590
Foster Pepper PLLC
1111 3rd Avenue Suite 3000
Seattle, WA 98101-3296
02/01/2017 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
Ex parte SAMIR VARMA
Appellant
Appeal 2014-007760
Reexamination Control 90/012,366
United States Patent 6,349,291
Technology Center 3900
Before JOHN A. JEFFERY, STEPHEN C. SIU, and ERIC B. CHEN,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
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DECISION ON APPEAL
This case returns to us after the U.S. Court of Appeals for the Federal
Circuit (“CAFC”) (1) reversed the decision of another panel of this Board1
affirming the Examiner’s rejection of claim 24; (2) vacated the Board’s
decision affirming the Examiner’s rejection of claims 22, 23, and 25; and (3)
remanded the case to us for further proceedings regarding claims 22, 23, and
25.2 In re Varma, 816 F.3d 1352, 1366 (Fed. Cir. 2016). Claims 1—29 and
29—31 are not subject to reexamination in this ex parte reexamination
proceeding, and claims 26—28 are indicated as containing patentable subject
matter. Final Act. 1, 25.3 Upon reconsideration in light of the court’s
decision, we affirm-in-part, and designate our affirmance as a new ground of
rejection.
1 Judge Siu replaces then-Judge Dillon in the current panel.
2 Although the court also (1) reversed the Board’s decision affirming the
Examiner’s rejection of claims 1—5, 8—16, and 19—21, and (2) vacated the
Board’s decision affirming the Examiner’s rejection of claims 29—31 (see
Varma, 816 F.3d at 1366), those claims were not reexamined in this ex parte
reexamination proceeding, but rather in a related inter partes reexamination
proceeding (Control No. 95/001,939). The Board’s decision in the related
inter partes reexamination proceeding of the ’291 patent (Appeal No. 2015-
GO 1450) affirming the Examiner’s rejection of claims 1—5, 8—16, 19—21, and
29—31 was also appealed to the CAFC, and the court’s decision involves the
Board’s decisions from both proceedings. See Varma, 816 F.3d at 1355.
3 Throughout this opinion, we refer to (1) the Appeal Brief filed December
16, 2013 (supplemented January 15, 2014) (“App. Br.”); (2) the Examiner’s
Answer mailed April 11, 2014 (“Ans.”); (3) the Reply Brief filed November
22, 2015 (“Reply Br.”); and (4) the earlier Board decision mailed December
16, 2014 (“Bd. Dec.”).
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STATEMENT OF THE CASE
This proceeding arose from a request for ex parte reexamination filed
on March 15, 2012, of United States Patent 6,349,291 (“the ’291 patent”),
issued to Varma on February 19, 2002.
The ’291 patent describes a method and system for statistically
analyzing, displaying, and disseminating financial data over an information
network such as the Internet and World Wide Web. To that end, the
invention uses resampled statistical analysis to analyze financial data and, in
one embodiment, resampled statistics are generated faster via parallel
processing. See generally ’291 patent, Abstract.
One particular resampling method estimates the distribution of data in
a pool (sample space) by repeated sampling from the pool. See id., col. 10,
11. 20-38. Although samples may be drawn at random, a “bias parameter”
can be used to specify a degree of randomness in the resampling process.
See id., col. 11,11. 55-58; col. 15,11. 52-62; col. 16,11. 9-21.
Claims 22 and 24 are illustrative of the invention and reproduced
below:
22. A system for providing statistical analysis of
investment information over an information network comprising:
a financial data database for storing investment data;
a client database;
a plurality of processors collectively arranged to perform a
parallel processing computation, wherein the plurality of
processors is adapted to:
receive a statistical analysis request corresponding to [a] two or
more selected investments;
based upon investment data pertaining to the two or more
selected investment, perform a resampled statistical analysis to
generate a resampled distribution; and,
provide a report of the resampled distribution.
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24. A system for providing statistical analysis of investment
information over an information network comprising:
a financial data database for storing investment data;
a client database:
a plurality of processors collectively arranged to perform
a parallel processing computation, wherein the plurality of
processors is adapted to:
receive a statistical analysis request corresponding to a
selected investment; wherein the statistical analysis request
includes [at least one of an investment identifier,] a bias
parameter that determines a degree of randomness in sample
selection in a resampling process,
and at least one of an investment identifier, a periods parameter
and a plot parameter;
based upon investment data pertaining to the selected
investment, perform a resampled statistical analysis to generate
a resampled distribution: and,
provide a report of the resampled distribution.
RELATED PROCEEDINGS
As noted previously, this case is related to an inter partes
reexamination proceeding of the ’291 patent (Control No. 95/001,939)
where another panel of this Board affirmed the Examiner’s rejection of
claims 1—5, 8—16, 19—21, and 29—31. See IBM v. Investpic, LLC, No. 2015-
GO 1450 (PTAB Mar. 30, 2015). That decision was also appealed to the
CAFC, and the court’s decision involves the Board’s decisions from both the
present ex parte proceeding and the related inter partes proceeding. See
Varma, 816 F.3d at 1355.
We are also informed of concurrent litigation in the District of
Delaware that is currently stayed. Reply Br. v.
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THE REJECTION
The Examiner rejected claims 22—25 under 35 U.S.C. § 103(a) as
unpatentable over Frank A. Sortino, The Look of Uncertainty, 4 Investing
30-34 (1990) (“Sortino”), Maggioncalda (US 6,012,044; Jan. 4, 2000), and
Jerome Barraquand, Monte Carlo integration, quadratic resampling, and
asset pricing, 38 Math. & Computers in Simulation 173-82 (1995)
(“Barraquand”). Ans. 2—3.
ANALYSIS
Claim 24
Independent claim 24 recites, in pertinent part, a bias parameter that
determines a degree of randomness in sample selection in a resampling
process. For the reasons indicated by our reviewing court, Sortino does not
teach nor suggest biasing how samples are selected from a defined sample
space to arrive at a resampling-based measure for that sampling space.
Varma, 816 F.3d at 1359—61. As the court emphasizes, once a scenario is
created in Sortino, all selection of samples from that scenario is random—
not biased. Id. at 1361. Therefore, Sortino does not disclose a bias
parameter that operates on selecting samples from a sample space in a
resampling process as claimed. Id. Nor do the additional cited references
cure that deficiency.
Accordingly, we are persuaded that the Examiner erred by rejecting
claim 24.
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Claims 22 and 25
We will, however, sustain the Examiner’s obviousness rejection of
independent claim 22. Ans. 2—3. Claim 22 recites (1) a financial data
database for storing investment data; (2) plural processors collectively
arranged to perform a parallel processing computation, where the processors
are adapted to receive a statistical analysis request corresponding to two or
more selected investments; (3) based upon investment data pertaining to
those investments, perform a resampled statistical analysis to generate a
resampled distribution; and (4) provide a report of the resampled
distribution. Independent claim 25 recites similar limitations.
The Examiner cites Sortino for teaching receiving a statistical analysis
request corresponding to two or more selected investments; (2) performing a
sampled statistical analysis to generate a resampled distribution based on the
recited investment data; and (3) providing a report of that distribution. See
Ans. 2, 10—15. The Examiner also cites Maggioncalda for teaching the
recited databases, and a processor arranged to perform a computation. See
Ans. 2, 15—18. Moreover, Barraquand is cited for teaching plural processors
collectively arranged to perform a parallel processing computation. Ans. 3,
16. In light of these collective teachings, the Examiner concludes that
claims 22 and 25 would have been obvious. Ans. 3, 10-22.
But as our reviewing court indicates, a single request must correspond
to at least two investments under the correct construction of the claim.
Varma, 816 F.3d at 1362—64. Moreover, because Sortino treats the S&P 500
index as a single asset, it therefore, cannot meet the two-or-more
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investments limitation recited in claims 22 and 25. Id. at 1364.
Nevertheless, the court found that although Sortino’s figures relate to only a
single asset category, namely the S&P 500 index, Sortino discloses that
these results held for all nine asset categories studied, albeit lacking a
statement that a bootstrap analysis was performed of at least two categories
together. Id. at 1365.
Nevertheless, the court quoted passages from paragraphs 20 and 22 of
Dr. Sortino’s declaration, and left to us to determine the meaning and legal
significance of these passages, and whether relying on them at this stage is
procedurally appropriate. Id.
We appreciate the court’s guidance in this regard, and we now address
the particular issues raised by the court. First, it is appropriate to rely on the
facts in the cited passages from the Sortino declaration at this stage of the
proceeding. These passages not only provide insight regarding the asset
allocation procedure in the Sortino reference, but also the work supporting
that article—insights from the very author of that reference. In light of these
facts, we deem our affirmance of the Examiner’s obviousness rejection of
claims 22 and 25 as a new ground of rejection given the increased emphasis
on the court’s cited passages from the Sortino declaration in our obviousness
analysis here—an emphasis that arguably changes the thrust of the rejection.
Turning to the rejection, we find no error in the Examiner’s reliance
on the collective teachings of Sortino, Maggioncalda, and Barraquand for at
least suggesting the limitations of claims 22 and 25, particularly in light of
the court’s emphasis. First, each asset category in Sortino corresponds to an
investment. See Declaration of Dr. Sam L. Savage dated July 16, 2012
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(“Savage Decl.”), at 117 (equating an asset category, such as an S&P 500
index, to an asset); Varma, 816 F.3d at 1364 (quoting this paragraph).
Therefore, the nine asset categories in Sortino correspond to multiple
investments.
Although the S&P 500 index in Sortino is one exemplary
investment—not multiple investments—Sortino nevertheless notes that the
disclosed results held for all nine asset categories as Requesters indicate.
Id. Therefore, we agree with Requesters that Sortino’s bootstrap method is
used to analyze two or more investments, namely nine asset categories. Id.
But Sortino does not say whether a single bootstrap analysis is
performed for at least two categories together as the court indicates. Varma,
816 F.3d at 1365. Indeed, Dr. Savage declares that Sortino performs this
analysis independently and sequentially on each of the nine asset categories.
Savage Decl. 129. Nevertheless, Dr. Sortino declares that, in connection
with the asset allocation model developed at the time of the Sortino article, it
is important to estimate the correlations between the asset categories and
create a variance-covariance matrix. Sortino Decl. 120. See also id. 122
(“[F]or asset allocation we only needed to measure the covariance between
the overall asset categories (e.g., the entire S&P, Japan, etc.), not the
individual underlying securities or stocks that comprised the asset
category.”); Varma, 816 F.3d at 1365 (quoting these passages).
Given this acknowledged statistical analysis involving multiple asset
categories (i.e., investments) and their correlations, Sortino at least suggests
that performing the disclosed statistical analysis for at least two category-
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based investments together would have been at least an obvious variation
over performing that analysis for each investment individually.
Furthermore, for the reasons indicated in the earlier Board decision,
we find no error in the Examiner’s reliance on Maggioncalda and
Barraquand for teaching the particular recited features for which they were
cited, and the articulated reasons to combine the cited references. Bd. Dec.
7—11.4 Moreover, as the earlier Board panel indicated, the Examiner
considered all objective evidence submitted by Appellant, and found such
evidence, including expert declarations, unpersuasive. Bd. Dec. 12—13.
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 22 and 25 as obvious over Sortino, Maggioncalda, and Barraquand.
Claim 23
We also sustain the Examiner’s rejection of dependent claim 23
reciting that the resampled distribution report is a distribution plot for the
reasons indicated on page 11 of the earlier Board decision.
4 To the extent that Appellant challenges aspects of the earlier Board
decision other than those for which that decision was reversed or remanded
for further consideration, we see no reason to disturb those other aspects of
the earlier Board decision, for the court did not address those particular
challenges, nor are we persuaded of any other error in the earlier panel’s
decision apart from those errors indicated by the court. See Varma, 816 F.3d
at 1365.
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CONCLUSION
Under § 103, the Examiner did not err in rejecting claims 22, 23, and
25, but erred in rejecting claim 24. We designate our affirmance of claims
22, 23, and 25 as a new ground of rejection.
DECISION
The Examiner’s decision rejecting claims 22—25 is affirmed-in-part.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant, within
two months from the date of the decision, must exercise one of the following
two options with respect to the new ground of rejection to avoid termination
of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the examiner, in which event the
prosecution will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new Evidence not
previously of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the decision. Should
the examiner reject the claims, appellant may again appeal to the Board
pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record. The request for rehearing must
address any new ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in entering the new
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ground of rejection and also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
AFFIRMED-IN-PART;
37 C.F.R, $ 41.50(b)
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