11191985 (B.P.A.I. Feb. 27, 2012)

Ex Parte Kahn et al

Board of Patent Appeals and InterferencesFeb 27, 2012

11191985 (B.P.A.I. Feb. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/191,985 07/29/2005 Markus Helmut Kahn 07781.0227-00 6838 60668 7590 02/27/2012 SAP / FINNEGAN, HENDERSON LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER BAIRD, EDWARD J ART UNIT PAPER NUMBER 3695 MAIL DATE DELIVERY MODE 02/27/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte MARKUS HELMUT KAHN, JENS-PETER JENSEN, and MARCUS BAUMANN ____________________ Appeal 2010-009484 Application 11/191,985 Technology Center 3600 ____________________ Before: HUBERT C. LORIN, ANTON W. FETTING, and JOSEPH A. FISCHETTI, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-009484 Application 11/191,985 2 STATEMENT OF CASE Appellants seek our review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1-6, 9-15, and 18. Claims 7, 8, 16, and 17 are canceled. Claims 19-34 are withdrawn. We reverse. THE CLAIMED INVENTION Appellants claim systems and methods for computing and manipulating migration and performance matrices in order to analyze risk and performance. (Specification ¶[002]). Claim 1 is illustrative of the claimed subject matter: 1. A method for computing a migration and performance matrix using a data processing system, the method comprising: electronically receiving a selection of rated entities from a user; electronically retrieving, from a database, mass data for the selected entities for a rating period; reading ratings and utilizations for the selected entities at a beginning and an end of the rating period to create a base matrix before aggregation, wherein the base matrix before aggregation provides a basis for completing the migration and performance matrix; reading at least one of an inflow and an outflow status for a rated entity, wherein the inflow or outflow status indicates whether the rated entity is new to a portfolio has been part of the portfolio, or has left the portfolio; storing the inflow or outflow status in the base matrix before aggregation; comparing, by a processor, ratings of the selected entities at the beginning of the rating period with ratings of the selected entities at the end of the rating period to determine rating migrations for the selected entities of the base matrix before aggregation; Appeal 2010-009484 Application 11/191,985 3 arranging an order of the selected entities, which are listed in the base matrix before aggregation, according to the rating migrations; forming a base matrix after aggregation based on the arranged base matrix before aggregation; and storing the base matrix after aggregation in memory of the data processing system. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Eder Brooks Ram Creager US 2005/0071266 A1 US 2006/0015425 A1 US 2006/0069635 A1 US 2006/0229963 A1 Mar. 31, 2005 Jan. 19, 2006 Mar. 30, 2006 Oct. 12, 2006 REJECTIONS The following rejections are before us for review. The Examiner rejected claims 1 and 10 under 35 U.S.C. § 112 Second Paragraph as being indefinite. The Examiner rejected claims 1, 3, 5, and 9 under 35 U.S.C. § 103(a) as being unpatentable over Eder and Creager. The Examiner rejected claims 2, 4, and 6 under 35 U.S.C. § 103(a) over Eder, Creager, and Brooks. The Examiner rejected claims 10, 12, 14, and 18 under 35 U.S.C. § 103(a) over Eder, Creager, and Ram. The Examiner rejected claims 11, 13, and 15 under 35 U.S.C. § 103(a) over Eder, Creager, Ram, and Brooks. Appeal 2010-009484 Application 11/191,985 4 ISSUES Did the Examiner err in rejecting claims 1 and 10 based on finding Eder discloses ratings as being “cash flows?” Did the Examiner err in rejecting claims 1 and 10 based on finding Eder discloses determining ratings migrations by “monitoring value and risk?” Did the Examiner err in rejecting claims 1 and 10 based on finding Eder discloses arranging an order by “generating a matrix from data already in a matrix?” FINDINGS OF FACT We find the following facts by a preponderance of the evidence. 1. The Specification describes that “[r]atings may reflect an internal or external rating system, such as Moody's.” (para. [051]). 2. The Specification describes means for arranging an order as being “sorted” by a data field in ascending order (para. [082]). ANALYSIS Section 112 Rejection of Claims 1 and 10 The Examiner rejected independent claims 1 and 10 under Section 112 Second Paragraph as indefinite, reasoning that the term “based on” in the clause forming a base matrix after aggregation based on the arranged base matrix before aggregation is “vague and indefinite.” (Ans. 4). Appellants argue the term “based on” in the claim is definite (Appeal Br. 11-12). Appeal 2010-009484 Application 11/191,985 5 We agree with Appellants, because we construe “based on” to mean the same things as “used as an input for,” in that the base matrix before aggregation is used as an input for the base matrix after aggregation. We therefore find “based on” here conveys a reasonable meaning to one of ordinary skill in the art, and cannot sustain the rejection under Section 112. Section 103 Rejection of Claims 1-6 and 9 Appellants first argue “Recalculating risk has nothing to do with comparing ratings, and therefore, cannot teach or suggest ‘comparing ... ratings of the selected entities at the beginning of the rating period with ratings of the selected entities at the end of the rating period to determine rating migrations," as recited in claim 1” (Appeal Br. 13). We agree there is error in the rejection, for the following reasons. The claimed comparing step uses ratings (FF1 ) as input to a determination of changes in those ratings, by comparing ratings between the beginning and end of a rating period. However, the Examiner found the determination of ratings migrations, based on determining the change in ratings, as the “defining, measuring and continuously monitoring matrices of value and risk” (Ans. 5, 11). Thus, the Examiner found cash flow in Eder as a rating, but found determining ratings migrations is not based on the ratings/cash flow, but is based instead on ratings as “monitoring ... of value and risk” (Ans. 11). We therefore do not find the required connection between ratings and ratings migrations as presented by the Examiner. Even if “monitoring” involves some form of comparing, Eder does not disclose comparing/monitoring the “cash flows” that the Examiner found are the claimed ratings. Appeal 2010-009484 Application 11/191,985 6 Appellants further argue “determined change is not used for ‘arranging an order’ of the items in basic financial system table 143, as recited in claim 1.” (Appeal Br. 13). We agree with Appellants. The Examiner found the step of arranging an order of the selected entities, which are listed in the base matrix ... according to the rating migrations at Eder’s “generating a matrix [0063], including summing the results ...” (Ans. 5, 12). We do not find that generating a matrix necessarily involves arranging an order, since the claim recites that the data is already in a base matrix. Therefore creating one matrix from another involves only copying without any arranging. That is because we construe the term arranging to require something more than mere copying, such as sorting, ranking, or other steps to affect the arrangement of the data, as described by the Specification by example (FF 2). We thus find error in the prima facie case of obviousness because the claim requirements of determining ratings migrations, and arranging an order according to the ratings migrations is not met by the prior art. Therefore, we cannot sustain the rejection of claim 1. Since claims 2-6 and 9 depend from claim 1, and since we cannot sustain the rejection of claim 1, the rejection of claims 2-6 and 9 likewise cannot be sustained. Section 103 Rejection of Claims 10-15 and 18 Independent claim 10 recites two limitations substantially identical to corresponding limitations in claim 1, as follows: a processor configured to compare ratings of the selected entities at the beginning of the rating period with ratings of the selected entities at the end of the rating period to determine Appeal 2010-009484 Application 11/191,985 7 rating migrations for the selected entities of the base matrix before aggregation; and means for arranging an order of the selected entities, which are listed in the base matrix before aggregation, according to the rating migrations. Appellants argue claim 10 by reference to the arguments directed to claim 1 (Appeal Br. 15). Because of the similarities of the above to claim limitations to the corresponding limitations in claim 1 (Answer 10), we find error by Examiner at the rejection of claim 10 for the same reasons set forth above at claim 1. We therefore cannot sustain the rejection of claim 10. Since claims 11-15 and 18 depend from claim 10, and since we cannot sustain the rejection of claim 10, the rejection of claims 11-15 and 18 likewise cannot be sustained. CONCLUSIONS OF LAW The Examiner erred in rejecting claims 1 and 10 under 35 U.S.C. § 112, second paragraph, as being indefinite. The Examiner erred in rejecting claims 1, 3, 5, and 9 under 35 U.S.C. § 103(a) as being unpatentable over Eder and Creager. The Examiner erred in rejecting claims 2, 4, and 6 under 35 U.S.C. § 103(a) over Eder, Creager, and Brooks. The Examiner erred in rejecting claims 10, 12, 14, and 18 under 35 U.S.C. § 103(a) over Eder, Creager, and Ram. The Examiner erred in rejecting claims 11, 13, and 15 under 35 U.S.C. § 103(a) over Eder, Creager, Ram, and Brooks. Appeal 2010-009484 Application 11/191,985 8 DECISION For the above reasons, the Examiner’s rejection of claims 1-6, 9-15, and 18 is REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). REVERSED MP