Ex Parte Boyda et al

Patent Trial and Appeal Board

Apr 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. § 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. § 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.
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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. § 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.
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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
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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. § 102(e) is reversed.
REVERSED
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