Ex Parte Greenstein

Patent Trials and Appeals Board

Aug 21, 2018

12851021 - (D) (P.T.A.B. Aug. 21, 2018)

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.
12/851,021 08/05/2010 Mark Alfred Greenstein GREE3011/FJD 1950
23364 7590
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
SIGMOND, BENNETT M
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
MAIL @B ACONTHOMAS .COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK ALFRED GREENSTEIN
Appeal 2016-006727
Application 12/851,021
Technology Center 3600
Before JEAN R. HOMERE, BETH Z. SHAW, and
PHILLIP A. BENNETT, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
In papers filed June 11, 2018, Appellant requests for a second time
reconsideration under 37 C.F.R. § 41.52 from the Decision of the Patent
Trial and Appeal Board (“Board”), dated February 1, 2018. In the Decision,
we affirmed the Examiner’s patent ineligibility rejection and obviousness
rejection of claims 1—3 and 5—12. Dec. 9. On March 28, 2018, Appellant
requested a rehearing, which was granted in a Decision on Request for
Rehearing dated April 13, 2018, reiterating our affirmance of the cited
rejections. Reh’g. Dec. 8. From that Decision, Appellant files the present
second rehearing request.
We DENY Appellant’s request.
Appeal 2016-006727
Application 12/851,021
ANALYSIS
In the present Request for Rehearing (“Req. Reh’g”), Appellant
presents two principal arguments. Req. Reh’g. 2—22. We address
Appellant’s arguments seriatim.
Non Patent-Eligible Subject Matter
Appellant presents a new argument based upon Berkheimer v. IIP
Inc., 881 F.3d 1360 (Fed. Cir. Feb. 8, 2018) (hereafter “Berkheimer”), to
request reconsideration of the decision sustaining the rejection of claims 1—3
and 5—12 under 35 U.S.C. § 101. Req. Reh’g 2. Because Berkheimer was
decided BEFORE the date of Appellant’s first request for rehearing, dated
March 28, 2018, Appellant’s request is INADMISSIBLE for a further
rehearing under 37 C.F.R. § 41.52(a)(2).
In the request, Appellant argues that the Board took a new position by
concluding that “Appellant’s [collective] investment vehicle is directed to a
conventional portfolio rebalancing tool that merely automates a well-
established investment management'' as a basis that the claims are not
directed to patent eligible subject matter. Req. Reh’g. 3 (emphasis added).
In particular, Appellant argues the following:
In its reconsideration the Board posits a new position and basis
for concluding that the claims do not constitute patentable
subject matter, that the claims describe conventional
rebalancing.
The assertion that the claims constitute conventional
rebalancing was not previously made. Appellant could not
reasonably have anticipated that the Board would incorrectly
make this point and accordingly did not have a fair opportunity
to address it. Therefore, Appellant is entitled to respond,
including providing evidence, as has been done below, which
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Application 12/851,021
demonstrate that this assertion is not correct. Appellant
respectfully suggests that the Board should welcome such
evidence as it informs the Board of relevant facts which in turn
permits the Board to base any opinion on such facts. As an
initial matter Appellant noted that the claims can be used to
effectively change investment returns which include effectively
changing future investment returns allocation back to reflect
that which the investment is intended to accomplish however,
this is merely a subset of how the claims may operate, For
example, the claims can be used to shift investment returns
from one based largely on stocks to one based more on bonds
as a retirement investor ages, while not employing conventional
rebalancing.
The Memorandum appropriately places the burden of
producing proof of an assertion that claims address a customary
practice on the party asserting it, once it is challenged. In this
case the Appellant, even though the burden should be that of
the Board, provides the following documentary evidence will
demonstrate that the operation of the claims, considered as a
whole, were contrary to the Opinion, not well established
conventional rebalancing at the time of the application and
instead this statement, upon which the decision is premised, is
devoid of any factual basis or underpinning.
Id. at 3^4.
These arguments are not persuasive. We do not agree with Appellant
that the stated conclusion is a new one. In the original Decision, we reached
a similar conclusion as a basis that the claims are not directed to patent
eligible subject matter. Dec. 9. In particular, in our patent eligibility
analysis of the claims, we concluded that “the claimed subject matter
pertains to the well-known practices of employing a database system for
allocating returns in an investment fund.'1'’ Id. (emphasis added). As
indicated in the cited emphasized texts, the common thread between the
original Decision and the Request for Rehearing Decision is that “portfolio
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Application 12/851,021
rebalancing” or “allocating returns in an investment fund” are well-
established investment management tools. Therefore, the overall conclusion
of using conventional investment management tools to balance portfolios
(e.g., allocate returns) in an investment fund was relied upon in the initial
Decision to affirm the Examiner’s patent eligibility rejection. Id.
Consequently, at the time of the first rehearing request on March 28, 2018,
Appellant had ample opportunity to raise the alleged Berkheimer issue based
in the new development in the law that had occurred more than a month
earlier. As previously noted, because the request for rehearing does not
avail Appellant with the luxury of making arguments that could have been
made in earlier instances, belated arguments are simply not considered.
Reh’g. Dec. 7 (citing to Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010)).
Next, Appellant argues the following:
Appellant noted in its brief, and the Board did not
address, that the claims enable one to avoid the electronic
markets where time is of the essence and therefore provide a
new and more effective means to avoid the abuses in electronic
markets. The decision in question recognized that a new way to
address these problems is patent eligible. Appellant speculates
that the Board believed it could fail to address the issue because
of its characterization of the claims as a conventional portfolio
rebalancing tool. As noted above, this is false and there is no
basis whatsoever for its assertion. Therefore, the Board is
required to address this point.
Req. Reh’g. 9.
We decline to consider Appellant’s rebuttal arguments regarding our
analysis disagreeing with Appellant that the court’s reasoning in Trading
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Appeal 2016-006727
Application 12/851,021
Techs.1 is applicable to the claims in the present appeal. Req. Reh’g. 9—11.
As previously noted, the request for rehearing is not an opportunity for
Appellant to provide rebuttal arguments. Reh’g. Dec. 7 (citing to Ex parte
Borden, 93 USPQ2d 1473). Rather it is a medium for Appellant to point out
Board’s error arising from the Board misapprehending or overlooking an
issue previously raised by appellants or a new issue raised in the Board’s
Decision. Id. Here, Appellant’s arguments lack merit because the purported
benefits of the invention asserted by Appellant have no basis in the claims
on appeal before us. Argument of counsel cannot take the place of evidence
lacking in the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA
1977); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). As such,
these arguments are entitled to little probative value. In re Geisler, 116 F.3d
1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984). Thus, we find Appellant’s arguments and proffered evidence
unpersuasive.
Obviousness Rejection
Appellant alleges that the Board failed to consider numerous
arguments raised by Appellant in earlier pleadings. Req. Reh’g. 12. In
particular, Appellant alleges that the Board did not consider Appellant’s
argument that the Examiner erred in asserting that a pension plan is an
investment vehicle. Id. at 12—16. This allegation has no merit because we
considered and previously addressed that issue in our earlier Decision. Dec.
6. We likewise decline Appellant’s invitation to further review the issue
regarding our construction of “a collective investment vehicle” as one or
1 Trading Techs. Int’l, Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir.
2017).
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Application 12/851,021
more investment vehicle, as opposed to a single investment vehicle. Req.
Reh’g. 17—21. We reiterate our position that the record before us does not
limit the cited ‘“a collective investment vehicle’ to a single investment
vehicle thereby precluding the one or more investment vehicles included in
the pension plan disclosed by Tarbox, as proffered by the Examiner.” Reh’g
Dec. 3 (citing Ans. 6).
Further, Appellant alleges that the dependent claims 2 and 6—10 recite
limitations that are specific to the operation of qualified plans, and were not
waived. Req. Reh’g. 21—22. This argument is not persuasive because, as
noted in the original Decision, Appellant’s failure to separately argue the
cited claims in the Appeal Brief is tantamount to a waiver of such
arguments. Dec. 3.
Finally, for Appellant’s convenience, we remind Appellant of the
following:
1. The Request for Rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the
Board.” 37 C.F.R. § 41.52(a)(1). We could not have overlooked
or misapprehended an argument that was not made in the briefs.
Nor is the request for rehearing another opportunity for Appellant
to have another bite at the apple.
2. Supplemental or new arguments submitted for the first time in a
request for rehearing are inappropriate, and without good cause,
will not be considered. See 37 C.F.R. § 41.52(a)(1). Accordingly,
we find no error in our affirmance of the Examiner’s obviousness
rejection and the patent ineligibility rejection.
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CONCLUSION
REQUEST FOR REHEARING DENIED
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