Ex Parte Kraemer

Board of Patent Appeals and Interferences

Feb 16, 2010

09685398 (B.P.A.I. Feb. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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7
Ex parte JAMES RICHARD KRAEMER 8
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Appeal 2009-003854 11
Application 09/685,398 12
Technology Center 3600 13
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Decided: February 16, 2010 16
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W. 20
FETTING, Administrative Patent Judges. 21
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CRAWFORD, Administrative Patent Judge. 23
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DECISION ON APPEAL26
Appeal 2009-003854
Application 09/685,398

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STATEMENT OF THE CASE 1
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection 2
of claims 1-31. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 3
Appellant invented systems and methods for automatically 4
rebalancing portfolios of assets to achieve optimality, whereby all 5
recommended rebalancing trade transactions can be automatically 6
implemented based on a customer’s single response to an alert message 7
(Spec. 1:13-16). 8
Claim 1 under appeal is further illustrative of the claimed invention as 9
follows: 10
1. A computer-implemented method of rebalancing a 11
portfolio of assets to achieve optimality, the method 12
comprising: 13
transmitting to a customer an alert message for alerting 14
an imbalance status of a customer's portfolio, and a list 15
comprising at least one recommended rebalancing transaction, 16
each recommended rebalancing transaction comprising asset 17
information identifying a specific asset, quantity information 18
identifying a specific number of units of the specific asset, and 19
transaction information comprising one of a buy instruction and 20
a sell instruction; 21
receiving from the customer a single response to the 22
transmitted alert message; and 23
automatically implementing the list comprising at least 24
one recommended rebalancing transaction based on the 25
received customer's response to cause execution of each 26
recommended rebalancing transaction. 27
The prior art relied upon by the Examiner in rejecting the claims on 28
appeal is: 29
Jones US 7,016,870 B1 Mar. 21, 2006 30
Bove US 7,149,713 B2 Dec. 12, 2006 31
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The Examiner rejected claims 1-31 under 35 U.S.C. § 103(a) as being 1
unpatentable over Bove in view of Jones. 2
We AFFIRM-IN-PART. 3
4
ISSUES 5
Did the Appellant show the Examiner erred in asserting that a 6
combination of Bove and Jones renders obvious 7
transmitting to a customer an alert message 8
for alerting an imbalance status of a customer's 9
portfolio, and a list comprising at least one 10
recommended rebalancing transaction, each 11
recommended rebalancing transaction comprising 12
asset information identifying a specific asset, 13
quantity information identifying a specific number 14
of units of the specific asset, and transaction 15
information comprising one of a buy instruction 16
and a sell instruction[,] 17
as recited in independent claim 1? 18
Did the Appellant show the Examiner erred in asserting that a 19
combination of Bove and Jones renders obvious “wherein the transmitting is 20
performed via a first customer-defined communications method,” as recited 21
in dependent claim 2? 22
Did the Appellant show the Examiner erred in asserting that a 23
combination of Bove and Jones renders obvious “wherein the customer's 24
response constitutes performing a single action by the customer,” as recited 25
in dependent claim 4? 26
Did the Appellant show the Examiner erred in asserting that a 27
combination of Bove and Jones renders obvious “wherein the customer's 28
response is contained in a return e-mail from the customer, wherein the 29
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return e-mail includes a transaction number identifying the list comprising at 1
least one recommended rebalancing transaction,” as recited in dependent 2
claim 10? 3
Did the Appellant show the Examiner erred in asserting that a 4
combination of Bove and Jones renders obvious “wherein the customer's 5
response is received on paper, and wherein the paper includes an optical 6
code for retrieving the list comprising at least one recommended rebalancing 7
transaction, and verification information for verifying the identity of the 8
customer,” as recited in dependent claim 11? 9
Did the Appellant show the Examiner erred in asserting that a 10
combination of Bove and Jones renders obvious “wherein the customer's 11
response is received as a voice sound, wherein the voice sound is recognized 12
using a voice recognition device,” as recited in dependent claim 12? 13
14
FINDINGS OF FACT 15
Specification 16
Appellant invented systems and methods for automatically 17
rebalancing portfolios of assets to achieve optimality, whereby all 18
recommended rebalancing trade transactions can be automatically 19
implemented based on a customer’s single response to an alert message 20
(Spec. 1:13-16). 21
It is desired to provide a method of facilitating the exchange of 22
currencies of local operating units into a preferred currency having a 23
premium rate of return (Spec. 2:3-4). 24
Appeal 2009-003854
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Bove 1
Bove discloses a computerized scheme for automating investment 2
planning for a client. In the scheme, data regarding the client's desired asset 3
allocation, current asset portfolio and preferred domain are input into a 4
computer or processor. This data is used to automatically generate financial 5
transaction recommendations for modifying the client's current asset 6
portfolio to reach as close as possible to the desired asset allocation and the 7
preferred domain. 8
The recommendations include specific recommendations for selling 9
amounts of selected current assets and specific recommendations for buying 10
amounts of one or more investment funds. The recommendations are 11
displayed on a summary report for review by the client or the client's 12
financial manager. The recommendations are used to sell amounts of 13
selected current assets or to buy amounts of one or more investment funds. 14
The recommendations may suggest that the client add specific amounts of 15
shares to currently held mutual funds, and/or open one or more new mutual 16
funds and contribute specific amounts of shares to the new funds (col. 1, l. 17
56 through col. 2, l. 14). 18
The executed computer program product accepts input data regarding 19
the investors, interchangeably referred to hereafter as “clients” or 20
“customers,” and provides outputs in the form of recommendations on a 21
summary report or in the form of signals which execute automated buy/sell 22
trades based on recommendations determined by the program. The client 23
may interact with the executed computer program product directly, or a 24
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financial counselor may provide the inputs on behalf of the client. The 1
description of the invention set forth below presumes that a counselor will 2
interact with a client to provide all of the necessary input data (col. 3, ll. 33-3
42). 4
The Auto Rebalancing button causes the system to run the auto rebal 5
algorithm to determine how the customer's portfolio should be modified to 6
meet the target portfolio. The results of Auto Rebal will be displayed in the 7
Selected Funds window. The buy/sell amounts specified for the funds may 8
be changed by the counselor (col. 12, ll. 16-22). 9
10
Jones 11
At step 840, advice processing is performed. Based upon the user's 12
preference among the decision variables, the system may offer advice 13
regarding which decision variable should be modified to bring the portfolio 14
back on track to reach the one or more financial goals with the desired 15
probability. In addition, the system may recommend a reallocation to 16
improve efficiency of the portfolio. An alert may be generated to notify the 17
user of the advice and/or need for affirmative action on his/her part. As 18
described above, the alert may be displayed during a subsequent user session 19
with the financial advisory system 100 and/or the alerts may be transmitted 20
immediately to the user by telephone, fax, email, pager, fax, or similar 21
messaging system (col. 28, ll. 24-37). 22
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PRINCIPLES OF LAW 1
Obviousness 2
One cannot show nonobviousness by attacking references individually 3
where the rejections are based on combinations of references. In re Keller, 4
642 F.2d 413, 426 (CCPA 1981). 5
To establish prima facie obviousness of a claimed invention, all the 6
claim limitations must be taught or suggested by the prior art. In re Royka, 7
490 F.2d 981, 984 (CCPA 1974). 8
The examiner bears the initial burden, on review of the prior art or on 9
any other ground, of presenting a prima facie case of unpatentability. If that 10
burden is met, the burden of coming forward with evidence or argument 11
shifts to the applicant. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). 12
13
ANALYSIS 14
Independent Claim 1 15
We are not persuaded of error on the part of the Examiner by 16
Appellant’s argument that a combination of Bove and Jones does not render 17
obvious the transmitting step of independent claim 1 (App. Br. 6-7). 18
Appellant argues that Jones only discloses sending an alert message for the 19
availability of a new financial product or a need for rebalancing of a 20
portfolio, and not “a list comprising at least one recommended rebalancing 21
transaction, each recommended rebalancing transaction comprising asset 22
information identifying a specific asset, quantity information identifying a 23
specific number of units of the specific asset, and transaction information 24
comprising one of a buy instruction and a sell instruction,” as claimed. 25
However, Jones is cited for sending an alert message for a need for 26
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rebalancing of a portfolio, and Bove is cited for the specifics of the 1
rebalancing, namely, “financial transaction recommendations for modifying 2
the client's current asset portfolio to reach as close as possible to the desired 3
asset allocation and the preferred domain,” (col. 1, ll. 63-66) including 4
“specific recommendations for selling amounts of selected current assets and 5
specific recommendations for buying amounts of one or more investment 6
funds” (col. 1, l. 66 through col. 2, l. 2). See In re Keller, 642 F.2d at 426. 7
8
Claims 5-9, 13-17, and 29-31 9
Appellant argues that independent claims 16 and 29 are allowable for 10
the same reasons independent claim 1 is allowable (App. Br. 11-12, 14). As 11
Appellant has not shown how the Examiner erred in rejecting independent 12
claim 1, the rejections of independent claims 16 and 29 are sustained. 13
Appellant does not set forth any additional arguments concerning any 14
errors made by the Examiner specific to the rejections of the additional 15
subject matter set forth in any of dependent claims 5-9, 13-15, 17, 20-22, 26-16
28, 30, and 31 (App. Br. 7, 11-14). These rejections are also sustained. 17
18
Customer-Defined Communications Method 19
We are persuaded of error on the part of the Examiner by Appellant’s 20
argument that a combination of Bove and Jones does not render obvious 21
“wherein the transmitting is performed via a first customer-defined 22
communications method,” as recited in dependent claim 2 (App. Br. 8). 23
While Jones does list a myriad of communications methods via which the 24
alerts may be sent to the customer (col. 28, ll. 33-37), there is no indication 25
in Jones that any of these communications methods are customer-defined as 26
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set forth in the claim. See In re Royka, 490 F.2d at 984. Indeed, the 1
aforementioned portion of Jones is silent as to how specific communications 2
methods are chosen for delivering the alert to the customer, and the 3
Examiner has not met the burden of setting forth a prima facie case of how 4
such a modification of Jones would have been obvious. See In re Oetiker, 5
977 F.2d at 1445. 6
By virtue of its dependence from claim 2, we also do not sustain the 7
rejection of dependent claim 3. 8
As dependent claims 18 recites subject matter similar to dependent 9
claim 3, we also do not sustain the rejection of dependent claim 18. 10
11
Single Action 12
We are persuaded of error on the part of the Examiner by Appellant’s 13
argument that a combination of Bove and Jones does not render obvious 14
“wherein the customer's response constitutes performing a single action by 15
the customer,” as recited in dependent claim 4 (App. Br. 10). The portions 16
of Bove cited by the Examiner disclose providing recommendations to the 17
client in a summary report, and executing transactions based on those 18
recommendations (col. 1, l. 56 through col. 2, l. 14). The portions of Jones 19
cited by the Examiner disclose alerting the user to take affirmative actions. 20
While Bove discloses that the “client may interact with the executed 21
computer program product directly” in order to execute the transactions 22
based on the recommendations (col. 3, ll. 37-40), and it logically flows from 23
the aforementioned disclosure of Jones that the user will take some action in 24
response to the alert, neither cited portion discloses exactly what those 25
actions are, let alone that the action is a single action, as recited in dependent 26
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claim 4. See In re Royka, 490 F.2d at 984. Moreover, the Examiner has not 1
shown how a modification of Bove and Jones to include such a single action 2
would have been obvious. See In re Oetiker, 977 F.2d at 1445. 3
As dependent claims 19 recites subject matter similar to dependent 4
claim 4, we also do not sustain the rejection of dependent claim 19. 5
6
Return E-mail/Paper Optical Code/Voice Sound Response 7
We are persuaded of error on the part of the Examiner by Appellant’s 8
argument that a combination of Bove and Jones does not render obvious that 9
the customer's response is contained in a return e-mail/paper optical 10
code/voice sound from the customer, as recited in dependent claims 10, 11, 11
and 12 (App. Br. 10-11). As set forth above with respect to dependent claim 12
4, the cited portions of Bove and Jones do not disclose any specifics of how 13
the customer responds to the alert message, let alone that the response is in a 14
return e-mail/paper optical code/voice sound. See In re Royka, 490 F.2d at 15
984. Moreover, the Examiner has not shown how a modification of Bove 16
and Jones to include a return e-mail/paper optical code/voice sound response 17
would have been obvious. See In re Oetiker, 977 F.2d at 1445. 18
As dependent claims 23, 24, and 25 recite subject matter similar to 19
dependent claims 10, 11, and 12, we also do not sustain the rejections of 20
dependent claim 23, 24, and 25. 21
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CONCLUSION OF LAW 1
On the record before us, Appellant has shown that the Examiner erred 2
in rejecting claims 2-4, 10-12, 18, 19, and 23-25. 3
On the record before us, Appellant has not shown that the Examiner 4
erred in rejecting claims 1, 5-9, 13-17, 20-22, and 26-31. 5
6
DECISION 7
The Examiner’s rejection of claims 1, 5-9, 13-17, 20-22, and 26-31 is 8
sustained. 9
The Examiner’s rejection of claims 2-4, 10-12, 18, 19, and 23-25 is 10
not sustained. 11
No time period for taking any subsequent action in connection with 12
this appeal may be extended under 37 C.F.R. § 1.136(a) (2007). 13
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AFFIRMED-IN-PART 15
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hh 21
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