Ex Parte 6349291 et al

Patent Trial and Appeal Board

Dec 16, 2014

90012366 (P.T.A.B. Dec. 16, 2014)

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.
90/012,366 06/21/2012 6349291 206801-14001-100 4278
16579 7590 12/16/2014
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
12/16/2014 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 No. 90/012,366
Patent 6,349,291
Technology Center 3900
____________

Before JOHN A. JEFFERY, ERIC B. CHEN, and
ANDREW J. DILLON, Administrative Patent Judges.

DILLON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 22-25. Claims 1-21 and 29-31 were not subject to
reexamination, claims 26-28 have been held patentable. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant’s invention is directed to a method and system for the
Appeal 2014-007760
Reexamination Control No. 90/012,366
Patent 6,349,291

2
statistical analysis, display, and dissemination of financial data over an
information network such as the Internet and the World Wide Web (WWW).
See Abstract.
Claim 22 is illustrative, with key disputed limitations emphasized:
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 investments, perform a resampled statistical analysis to
generate a resampled distribution: and,

provide a report of the resampled distribution.

The Examiner relies on the following as evidence of unpatentability:
Maggioncalda US 6,012,044 Jan. 4, 2000
Frank A. Sortino, The Look of Uncertainty, Investing Magazine, Winter
1990 (“Sortino”)
Jérôme Barraquand, Monte Carlo integration, quadratic resampling, and
asset pricing, Mathematics and Computers in Simulation, Vol. 38, pp. 173-
182 (“Barraquand”)

Appeal 2014-007760
Reexamination Control No. 90/012,366
Patent 6,349,291

3
THE REJECTION
The Examiner rejected claims 22-25 under 35 U.S.C. §103(a) as
unpatentable over Sortino, Maggioncalda, and Barraquand. Ans. 2-3.1

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
contentions in the Appeal Brief (App. Br. 1-63) and the Reply Brief (Reply
Br. 1-20) that the Examiner has erred. We disagree with Appellant’s
conclusions. We adopt as our own the reasons set forth by the Examiner in
the Examiner’s Answer in response to Appellant’s Appeal Brief (Ans. 2-22).
We highlight and amplify certain teachings and suggestions of the references
as follows.
Appellant argues the Examiner erred in rejecting claims 22-25 based
upon the failure of the cited references to show or suggest the following
three features:
1. 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, or

2. A bias parameter that determines a degree of randomness
in sample selection in a resampling process, or

3. 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

1 Throughout this opinion, we refer to the Appeal Brief filed December 16,
2013; the Examiner’s Answer mailed April 11, 2014; and, the Reply Brief
filed June 11, 2014.
Appeal 2014-007760
Reexamination Control No. 90/012,366
Patent 6,349,291

4
selected investments and, based upon investment data
pertaining to the two or more selected investments
perform a resampled statistical analysis.
App. Br. 1.

Feature 1

Specifically, Appellant urges that claims 22, 23, and 25 are patentable
as none of the cited references discloses a system “adapted to receive a
statistical analysis request corresponding to two or more selected
investments” or a system which “perform a resampled statistical analysis”
“based upon investment data pertaining to two or more selected
investments.” Appellant further argues that in view of the recitation of “a
request” which corresponds to “two or more selected investments” Sortino
cannot suggest the claimed invention since Sortino would require two
requests in order to operate on two investments. App. Br. 8, 16, Reply Br. 3-
4.
Appellant also argues that Sortino only discloses a statistical analysis
request corresponding to “a selected investment” and not “two or more
investments” as claimed. Id. at 9, 12. With respect to the “resampled
statistical analysis,” Appellant argues that Sortino utilizes a “distinct
bootstrap procedure” for each of seven sub-periods called scenarios, then
generates a distribution for each scenario and then linearly weights the
distributions. Id. at 14.
Regarding Appellant’s argument relating to “two or more
investments,” the Examiner finds that Appellant has improperly narrowed
the claims by importing disclosed, but unclaimed functions, into the claims
on appeal. Specifically, the Examiner notes that Appellant’s claims do not
Appeal 2014-007760
Reexamination Control No. 90/012,366
Patent 6,349,291

5
recite that the “two or more investments” are analyzed at the same time, and
also notes that Sortino discloses analysis of the S&P 500 index, which
comprises 500 underlying stocks (or investments). Ans. 11.
We agree with the Examiner. The absence of a temporal limitation
from Appellant’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 Appellant’s
argument that two requests would be necessary in the Sortino system to
accomplish an analysis of “two or more investments” we note that Appellant
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 (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, Appellant’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 Appellant shown as much on this record. Consequently,
Appeal 2014-007760
Reexamination Control No. 90/012,366
Patent 6,349,291

6
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.
With regard to Appellant’s argument that the cited references fail to
show or suggest a “resampled statistical analysis,” the Examiner cites
Exhibit IV of Sortino, noting that Sortino describes an analysis of S&P 500
distributions and then a subsequent (or resampled) analysis. The Examiner
finds that Appellant has improperly attempted to narrow the definition of
“resampling” beyond that set forth in the original specification. Ans. 2, 7-8.
Once again we agree with the Examiner. Nothing within Appellant’s
specification would lead one of ordinary skill in the art to the proposed
definition of “resampling.” Further, we find that the various iterations of
S&P 500 distributions disclosed within Sortino meet the claimed “resampled
statistical analysis” of Appellant’s claims. We, therefore, find that Sortino
shows or suggests the claimed “resampled statistical analysis.”
Feature 2
Regarding the “bias parameter that determines a degree of
randomness in sample selection in a resampling process,” Appellant argues
that claim 24 should be allowed “because none of the references teach a bias
parameter that determines a degree of randomness in sample selection in a
resampling process.” App. Br. 36.
With particularity, Appellant argues that the Request is in error by
asserting that “Sortino further discloses a bias parameter (reshaping the
sampled (historic) data) by its approach of dividing investment data into
scenarios such as recession, growth, or inflation, and then assigning a
Appeal 2014-007760
Reexamination Control No. 90/012,366
Patent 6,349,291

7
probability percentage (bias parameter) to each scenario for analysis by the
bootstrap method.” (Request at 32 and 34.) App. Br. 37-38.
. The Examiner once again points out that Appellant has improperly
narrowed the definition of “resampled” without any evidence that Appellant
“acted as their own lexicographer.” Ans. 7.
Further, the Examiner finds that there is no temporal requirement
within the claim that mandates that the bias parameter must be applied at the
start of the sample selection, rather than after an initial sample selection. The
Examiner finds that Sortino discusses the statistical bootstrap method which
utilizes a bias in sample selection during the resampling process. Id. at 10.
We find that claim 24 does not mandate that the bias parameter be
utilized during initial sample selection. We further 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 claim 24.

Feature 3
Appellant argues that claims 22-25 are allowable in view of the failure
of the cited references to disclose performing “a parallel processing
computation and resampled statistical analysis corresponding to two or more
investments.” App. Br. 18.
Appellant admits that Barraquand discloses a “plurality of processors”
which does in fact “perform a parallel processing computation,” but argues
that Barraquand fails to disclose that the “plurality of processors” must also
Appeal 2014-007760
Reexamination Control No. 90/012,366
Patent 6,349,291

8
be “adapted to” “receive a statistical analysis request corresponding to two
or more selected investments” and “perform a resampled statistical analysis
to generate a resampled distribution . . . based upon investment data
pertaining to the two or more selected investments.” Id. at 21-22.
The Examiner finds that Barraquand is relied upon merely for the
teaching of a plurality of processors performing parallel computation.
Consequently, the Examiner finds that Appellant’s argument that the
plurality of processors are not “adapted to” “receive a statistical analysis
request corresponding to two or more selected investments” and “perform a
resampled statistical analysis to generate a resampled distribution . . . based
upon investment data pertaining to the two or more selected investments.”
Ans. 16, 19.
We find the Examiner’s position persuasive. In arguing the
inappropriate nature of the Examiner’s citation of Barraquand for a failure to
disclose features which the Examiner has plainly stated are provided by
another reference, the Appellant is arguing the references piecemeal.
“The test for obviousness is not whether . . . the claimed invention
must be expressly suggested in any one or all of the references. Rather, the
test is what the combined teachings of the references would have suggested
to those of ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA
1981) (citations omitted). “Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986) (citing Keller, 642 F.2d at 425). In determining
Appeal 2014-007760
Reexamination Control No. 90/012,366
Patent 6,349,291

9
obviousness, furthermore, a reference “must be read, not in isolation, but for
what it fairly teaches in combination with the prior art as a whole.” Id.
Here, the Examiner relies on the combined teachings of Sortino,
Maggioncalda, and Barraquand (in combination with the prior art as a
whole) to reject the limitations at issue. Consequently, the Appellant's
individual attack on Barraquand cannot establish non-obviousness.
Other Issues
Appellant also argues that Maggioncalda fails to teach “a system for
parallel processing resampled statistical analysis requests corresponding to
two or more investments,” and that nothing within Maggioncalda explains
“how it could be adapted to be combined with Sortino to receive or perform
the resampled statistical analysis requests that would be based on two or
more investments. App. Br. 17-18.
The Examiner cites Maggioncalda for a teaching of a financial data
database for storing investment data. Ans. 2.
We find that Appellant is once again attacking the references in a
piecemeal fashion, rather than what the references would suggest to one of
ordinary skill in the art when viewed together.
Further, we find Appellant’s arguments regarding the failure of
Maggioncalda to suggest how that reference could be combined with Sortino
to be unavailing.
“[I]t is not necessary that the inventions of the references be
physically combinable to render obvious the invention under review.” In re
Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (citing Orthopedic Equip. Co.
v. United States, 702 F.2d 1005, 1013 (Fed. Cir. 1983); In re Andersen, 391
Appeal 2014-007760
Reexamination Control No. 90/012,366
Patent 6,349,291

10
F.2d 953, 958 (CCPA 1968)); see also In re Nievelt, 482 F.2d 965, 968
(CCPA 1973) (“Combining the teachings of references does not involve an
ability to combine their specific structures.”). “The test for obviousness is
not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference . . . . Rather, the test
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art.” Keller, 642 F.2d at 425 (citations
omitted).
Appellant makes similar ineffective arguments regarding a perceived
inability of Barraquand to be combined with Sortino and Maggioncalda, and
an assertion that one of ordinary skill in the art would not have turned to
Barraquand to solve the problem set forth in Appellant’s patent. App. Br.
24-25.
For the reasons we set forth above, regarding both the Examiner’s
stated purpose in the citation of Barraquand, as well as the settled law
regarding whether or not references must be physically combinable, we are
not persuaded by Appellant’s argument.
Appellant also argues that parallel processing, as taught by
Barraquand, is not necessarily properly combined with Sortino, noting the
increased complexity and lack of practical benefits. App. Br. 29-32.
In response, the Examiner finds that parallel processing computation,
as described by Barraquand, would have been obvious to one of ordinary
skill in the art at the time of the invention, as an approach which would
speed up the process of Sortino by repeatedly updating the reporting of
investment data. Ans. 17.
Appeal 2014-007760
Reexamination Control No. 90/012,366
Patent 6,349,291

11
We agree with the Examiner. We find nothing excessively complex
in the application of parallel processing to the process of Sortino to render
such an application beyond the level of ordinarily skilled artisans.
Moreover, such parallel processing would have been obvious to one of
ordinary skill in the art when considering a repetitive/iterative process such
as that disclosed by Sortino. Such an enhancement predictably uses prior art
elements according to their established functions—an obvious improvement.
See KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007)
Appellant argues the allowability of claim 23 based upon the
recitation of the provision of a “resampled distribution plot.” App. Br. 34-
35.
The Examiner finds that Sortino depicts a plot of the resampled
distribution of the S&P 500 distributions within Exhibit IV thereof. Ans. 3.
We find the Examiner’s position persuasive, noting Appellant failed
to respond to the Examiner’s position with respect to claim 23 in the Reply
Brief filed June 11, 2014.
Graham Factors
Appellant argues that claims 22-25 were improperly rejected under 35
U.S.C. §103(a) because the Examiner failed to properly consider the Graham
obviousness factors including: determining the scope and content of the
prior art; ascertaining the differences between the claimed invention and the
content of the prior art; and, resolving the level of ordinary skill in the
pertinent art. App. Br. 51
In paragraphs 4 and 5 of the Final Rejection dated July 3, 2013, the
Examiner sets forth with great detail the scope and content of the prior art,
Appeal 2014-007760
Reexamination Control No. 90/012,366
Patent 6,349,291

12
and notes that there are no structural differences between the combined
references and the claimed invention. (See Final Rej. at 23-24). The
Examiner incorporates this reasoning into the Answer at page 2. Further,
with respect to resolving the level of ordinary skill in the art, the references
represent the level of ordinary skill in the art. See In re GPAC Inc., 57 F.3d
1573, 1579 (Fed. Cir. 1995) (finding that the Board of Patent Appeals and
Interferences did not err in concluding that the level of ordinary skill was
best determined by the references of record); In re Oelrich, 579 F.2d 86,
91(CCPA 1978) (“[T]he PTO usually must evaluate . . . the level of ordinary
skill solely on the cold words of the literature.”).
Expert Declarations
Appellant argues that the Examiner failed to properly consider
objective evidence regarding the differences between the prior art and the
claimed invention. Specifically, Appellant argues that the Examiner failed
to consider and properly weigh the expert declarations submitted by
Appellant. App. Br. 53-61, 63-69.
The Examiner notes that Appellant’s expert declarations were
reviewed by the Examiner, finding that those declarations improperly
imported limitations disclosed within Appellant’s specification into the
claims on appeal which were contrary to the broadest reasonable
interpretation of those claims, as set forth by the Examiner. Ans. 6.
Further, the Examiner finds that Appellant and their experts
improperly narrowed the definition of several terms in a manner that is
Appeal 2014-007760
Reexamination Control No. 90/012,366
Patent 6,349,291

13
inconsistent with the proper interpretation of the claims, in view of
Appellant’s specification. Id. at 7-9.
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.

ORDER
The Examiner’s decision rejecting claims 22-25 is affirmed.
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).

AFFIRMED

Appeal 2014-007760
Reexamination Control No. 90/012,366
Patent 6,349,291

14
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