Ex Parte Carpenter et al

Patent Trial and Appeal Board

May 31, 2016

12497513 (P.T.A.B. May. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/497,513 0710212009 Steven A. Carpenter
23505 7590 06/02/2016
CONLEY ROSE, P,C
Jonathan M. Harris
1001 Mckinney
Suite 1800
HOUSTON, TX 77002-6417
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.
1991-04316 6630
EXAMINER
ABDI, KAMBIZ
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
06/02/2016 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):
pathou@conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN A. CARPENTER,
MANU SHARMA, and
SVEN JUNKERGARD
Appeal2013-007330
Application 12/497 ,513 1
Technology Center 3600
Before HUBERT C. LORIN, TARA L. HUTCHINGS, and
MATTHEWS. MEYERS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Steven A. Carpenter, et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1-31 and 33-74. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We REVERSE.
1 The Appellants identify E*Trade Financial Corporation as the real party in
interest. App. Br. 3.
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Application 12/497,513
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method comprising:
forming an electronic network between a plurality of investors,
wherein the electronic network includes a coupling to portfolios and
online brokerage accounts of the plurality of investors;
sharing between the plurality of investors via the electronic
network at least one of investment data and brokerage data, wherein
the investment data comprises data of the portfolios, wherein a
portfolio comprises at least one investment position, wherein the
brokerage data comprises data of the brokerage accounts; and
ranking, by way of automated programmed computer, each
investor relative to every other investor of the plurality of investors by
using at least one of the investment data and brokerage data to
calculate a rank score, the rank score comprising a persistence score,
the persistence score of an investor based on the number of times the
investor outperformed a benchmark and the number of times the
investor failed to outperform the benchmark.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Wallman
Kihn
Bowman-Amuah
Bookstaber
Lin
Lortscher, Jr.
Columbus
US 6,338,047 Bl
US 7 ,020,629 B 1
US 7,289,964 Bl
US 7,324,971 B2
US 7,401,039 Bl
US 7,720,732 B2
US 7,788,165 B2
The following rejections are before us for review:
2
Jan. 8,2002
Mar. 28, 2006
Oct. 30, 2007
Jan.29,2008
July 15, 2008
May 18, 2010
Aug. 31, 2010
Appeal2013-007330
Application 12/497,513
1. Claims 1-31, 33--46, and 48 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
2. Claims 1-26 and 47-74 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Wallman, Lin, Columbus, and Kihn. 2
3. Claims 27-30 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Wallman, Lin, Columbus, Kihn, Bookstaber, and
Lortscher, Jr ..
4. Claims 31 and 33--46 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Wallman, Lin, Columbus, Kihn, Bookstaber,
Lortscher, Jr., and Bowman-Amuah.
ISSUES
Did the Examiner err in rejecting claims 1-31, 33--46, and 48 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
Did the Examiner err in rejecting claims 1-26 and 47-74 under
35 U.S.C. §103(a) as being unpatentable over Wallman, Lin, Columbus, and
Kihn; claims 27-30 under 35 U.S.C. § 103(a) as being unpatentable over
Wallman, Lin, Columbus, Kihn, Bookstaber, and Lortscher, Jr.; and, claims
31 and 33--46 under 35 U.S.C. § 103(a) as being unpatentable over Wallman,
Lin, Columbus, Kihn, Bookstaber, Lortscher, Jr., and Bowman-Amuah?
2 We treat, as inadvertent error, the Examiner's omission of claims 23-26
and 72-74 as among the claims rejected as obvious over Wallman, Lin,
Columbus, and Kihn (Final Rejection 2) in light of the Examiner's treatment
of these claims at page 8 of the Final Rejection.
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Application 12/497,513
FINDINGS OF FACT
We rely on the Examiner's factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 1-31, 33-46, and 48 under 35 US.C. §112,first
paragraph, as failing to comply with the written description requirement.
The Examiner takes the position that the Specification as originally
filed does not provide adequate written descriptive support for the claim
limitation "a persistence score, the persistence score of an investor based on
the number of times the investor outperformed a benchmark and the number
of times the investor failed to outperform the benchmark" (independent
claims 1 and 48). Answer 3. According to the Examiner, "[t]his limitation
\Vas not included in the original disclosure of the claims, dra\vings
and specification and fails to be supported in a manner in which an ordinary
practitioner would have seen as obvious." Answer 3.
The Appellants respond that adequate written descriptive support for
said limitation is provided at page 30, line 29 to page 31, line 5, of the
Specification, reproduced below.
Figure 10 is a flow diagram for generating a persistence score
1000, under an embodiment. Generating the persistence score of an
embodiment comprises determining a winning score 1002 for each
investor as a number of times the investor outperformed a benchmark.
Generating the persistence score of an embodiment comprises
calculating a mean 1004 for each investor using a number of trials.
The number of trials is a sum of a number of times the investor
outperformed the benchmark and a number of times the investor failed
to outperform the benchmark.
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Application 12/497,513
The evidence weighs in favor of the Appellants' position.
The original claims included a limitation to generating a persistent
score, per se. See original claims 27 and 32. Accordingly, the question of
written descriptive support goes to whether the Specification "convey[ s]
with reasonable clarity to those skilled in the art that, as of the filing date
sought, [the inventors were] in possession of the invention," Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991); that is, more narrowly,
a "persistence score of an investor based on the number of times the investor
outperformed a benchmark and the number of times the investor failed to
outperform the benchmark" (claims 1 and 48). In that regard, the passage
reproduced above expressly describes an embodiment whereby a persistent
score is based on "a number of times the investor outperformed the
benchmark and a number of times the investor failed to outperform the
benchmark." Page 31, lines 3-5.
Accordingly, the evidence does not support the Examiner's position
that the Specification as originally filed does not provide adequate written
descriptive support for the claim limitation "a persistence score, the
persistence score of an investor based on the number of times the investor
outperformed a benchmark and the number of times the investor failed to
outperform the benchmark" (independent claims 1 and 48). The rejection is
not sustained.
The rejection of claims 1-26 and 47-74 under 35 USC §103(a) as being
unpatentable over Wallman, Lin, Columbus, and Kihn.
The independent claims are 1, 47, 48, 49, and 50.
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Application 12/497,513
Claim 1
The Appellants argue that "neither Columbus nor Kihn teaches,
suggests, or even contemplates ranking investors by using a rank score
comprising 'a persistence score, the persistence score of an investor based
on the number of times the investor outperformed a benchmark and the
number of times the investor failed to outperform the benchmark' [claim 1]
as required by the quoted limitation." App. Br. 12.
According to the Examiner,
Wallman does not explicitly disclose ranking, by way of an automated
programmed computer, each investor relative to every other investor
of the plurality of investors by using investment data to calculate a
rank score, the score comprising a persistence score, the persistence
score of an investor based on the number of times the investor
outpeiformed a benchmark and the number of times the investor failed
to outpeiform the benchmark.
Final Rejection 3 (emphasis added). The Examiner relies instead on
Columbus which, according to the Examiner, discloses "wherein the rank
score ranks the investor relative to other investors based upon the investment
data, wherein generating the rank score comprises generating the rank score
for each investor by combining several performance scoring
factors, including average historical peiformance, historical consistency in
investment transactions and the number of transactions." Final Rejection 3
(emphasis added). According to the Examiner, "[ t ]he average
historical performance means that all performance is included, those
investments which include the number of times the investor outperformed a
benchmark and the number of times the investor failed to outperform the
benchmark." Final Rejection 3. The Examiner also cites Kiln, which the
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Application 12/497,513
Examiner characterizes as disclosing "a persistence calculation algorithm,
which is a persistence score (Col. 6, 11. 38--46)." Final Rejection 3.
In our view, Columbus and Kiln do not provide adequate evidence to
support the finding of fact that the claim limitation "a persistence score, the
persistence score of an investor based on the number of times the investor
outperformed a benchmark and the number of times the investor failed to
outperform the benchmark" (claim 1) is disclosed in the prior art.
Columbus discloses generating a rank score by combining
performance factors such as average historical performance, consistency,
and number of transaction. The term "average historical performance" is
described at column 18, lines 7-14, in terms of examples, such as "the return
value of the investor's investment as determined at certain time intervals
after the investment." But there is no mention of it being based on "the
number of times the investor outperformed a benchmark and the number of
times the investor failed to outperform the benchmark" (claim 1 ).
The Examiner posits that "[t]he average historical performance means
that all performance is included, those investments which include the
number of times the investor outperformed a benchmark and the number of
times the investor failed to outperform the benchmark" (Final Rejection 3,
emphasis added), but there is inadequate evidence to support finding that
one of ordinary skill in the art would read it in such narrow terms. Without
more by way of evidence, giving Columbus's "average historical
performance" said meaning is at best a matter of conjecture.
The Examiner is not helped by the belated citations to publications (see
Answer 5-7) apparently discussing various persistences in performance and
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Application 12/497,513
growth, some of which have questionable applicability as prior art but none
of which describe a "persistence score of an investor based on the number of
times the investor outperformed a benchmark and the number of times the
investor failed to outperform the benchmark" (claim 1 ). Notwithstanding
the citations, there is inadequate evidence to conclude, as the Examiner has,
that "[a Jn ordinary practitioner of the art would have seen it as obvious to
have used the claimed definition of persistence scoring based on the
well-known technique of persistence scoring in the prior art." Answer 7.
As for Kihn, it broadly relates to evaluating investor performance by
evaluating excess returns of an evaluated portfolio against excess returns of
benchmark portfolios but Kiln provides no details on how the evaluation is
specifically performed.
We do not find that Columbus and Kihn are sufficient to lead one to
rank investors by using a rank score comprising "a persistence score, the
persistence score of an investor based on the number of times the investor
outperformed a benchmark and the number of times the investor failed to
outperform the benchmark" (claim 1 ), as claimed.
For the foregoing reasons, a prima facie case of obviousness for the
claimed subject matter has not been made out in the first instance by a
preponderance of the evidence and thus, the rejection of claim 1 is not
sustained. The rejection of claims 2-26, which claims depend from claim 1,
is similarly not sustained.
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Application 12/497,513
Claim 48
Like claim 1, claim 48 includes a limitation to a "rank score
comprising a persistence score, the persistence score of an investor based on
the number of times the investor outperformed a benchmark and the number
of times the investor failed to outperform the benchmark." The Examiner
takes the same position as to this limitation as was taken with regard to said
limitation in claim 1. See Final Rejection 7. Since we did not find the
combination ofColumbus and Kihn sufficient to lead one to rank investors
by using a rank score comprising "a persistence score, the persistence score
of an investor based on the number of times the investor outperformed a
benchmark and the number of times the investor failed to outperform the
benchmark" as claim 1 provides, we reach the same conclusion as to the
determination of obviousness for the subject matter of claim 48. For the
same reasons, we find that a prima facie case of obviousness for the claimed
subject matter has not been made out in the first instance by a preponderance
of the evidence and thus, the rejection of claim 48 is not sustained.
Claims 47, 49, and 50
Claims 4 7, 49, and 50 all call for a "confidence score of an investor
based on the ratio of a weighted average investment gain percentage of the
investor relative to a weighted average investment loss percentage of the
investor."
The Examiner's position is set forth in the discussion of claim 50 (see
Final Rejection 3), which is relied on in addressing the same limitation in
independent claims 47 and 49 (see Final Rejection 7). In that regard, the
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Application 12/497,513
Examiner found "a confidence score corresponding to the investor's
investment transactions [disclosed in Columbus] (Col. 5, 1. 63 - Col. 6, 1.
60)." Final Rejection 3. The Examiner appears to argue that Columbus
discloses a measure of confidence that can be calculated to consider other
factors that reflect an investor's return history and historical consistency
(citing col. 18, 11. 66 - col. 19, 11. 3 of Columbus). The Examiner finds that
it would have been obvious to one of ordinary skill in the art to construct a
confidence score in a variety of ways, including weighted averages. Answer
8.
The difficulty with the Examiner's reasoning is that Columbus
generally discloses calculating a measure of confidence using a standard
measure of confidence, the t-stat (see col. 6, 11. 2), but without mentioning
that other factors, such as the investor's return history and historical
consistency, can also be considered. Notwithstanding Columbus does not
specifically disclose considering such factors, nevertheless there is no
disclosure in Columbus of a "confidence score of an investor based on the
ratio of a weighted average investment gain percentage of the investor
relative to a weighted average investment loss percentage of the investor," as
claimed.
Accordingly, we do not find that Columbus is sufficient to lead one to
a "confidence score of an investor based on the ratio of a weighted average
investment gain percentage of the investor relative to a weighted average
investment loss percentage of the investor" (claims 47, 49, and 50) as
claimed.
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Application 12/497,513
For the foregoing reasons, a prima facie case of obviousness for the
claimed subject matter has not been made out in the first instance by a
preponderance of the evidence and thus, the rejection of claims 47, 49, and
50 is not sustained. The rejection of claims 51-74, which claims depend
from claim 50, is similarly not sustained.
The rejection of claims 27-30 under 35 US.C. §103(a) as being
unpatentable over Wallman, Lin, Columbus, Kihn, Bookstaber, and
Lortscher, Jr ..
The rejection of claims 31 and 33-46 under 35 US.C. §103(a) as being
unpatentable over Wallman, Lin, Columbus, Kihn, Bookstaber, Lortscher,
Jr., and Bowman-Amuah.
These two rejections involve claims 27-31 and 33--46 that depend
from claim 1 and thus, include all the limitations of claim 1. For the
foregoing reasons given for finding a prima facie case of obviousness for the
claimed subject matter of claim 1 has not been made out in the first instance
by a preponderance of the evidence and thus the rejection of claim 1 was not
sustained, the rejections of claims 27-31 and 33--46, which claims depend
from claim 1, are similarly not sustained.
CONCLUSIONS
The rejection of claims 1-31, 33--46, and 48 under 35U.S.C.§112,
first paragraph, as failing to comply with the written description requirement
is reversed.
The rejections of claims 1-26 and 47-74 under 35 U.S.C. § 103(a) as
being unpatentable over Wallman, Lin, Columbus, and Kihn; claims 27-30
under 35 U.S.C. § 103(a) as being unpatentable over Wallman, Lin,
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Application 12/497,513
Columbus, Kihn, Bookstaber, and Lortscher, Jr.; and, claims 31 and 33--46
under 35 U.S.C. § 103(a) as being unpatentable over Wallman, Lin,
Columbus, Kihn, Bookstaber, Lortscher, Jr., and Bowman-Amuah are
reversed.
DECISION
The decision of the Examiner to reject claims 1-31 and 33-74 is
reversed.
REVERSED
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