Ex Parte Lange

Patent Trial and Appeal Board

Mar 29, 2016

13135456 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/135,456 07/05/2011 Jeffrey Lange
26646 7590 03/31/2016
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
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.
121701120 6519
EXAMINER
BAIRD, EDWARD J
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
03/31/2016 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):
uspto@kenyon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY LANGE
Appeal2013-008446
Application 13/135,456 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and ROBERT J.
SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision of July 25, 2012, rejecting claims 250-259. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a new ground of rejection under 37
C.F.R. § 41.50(b).
1 According to Appellant, the real party in interest is Longitude, LLC.
Appeal Br. 1.
Appeal2013-008446
Application 13/135,456
Illustrative Claim
250. A computer system for assisting in conducting
demand-based trading, the system comprising:
at least one processor configured to:
receive an indication of a selected outcome and an
indication of a specified payout for an investment order, the
selected outcome corresponding to at least one of a plurality of
established states, each state corresponding to at least one
possible outcome of an event of economic significance; and
output an investment amount as a function of the selected
outcome, the specified payout and a total amount invested in
the plurality of states;
wherein:
the investment amount is an amount pledged to be paid if
the order is made, such pledge occurring prior to occurrence of
the event of economic significance; and
the specified payout is paid after and conditional upon
occurrence of the selected outcome of the event of economic
s1gn1ficance.
Rebane
Corby et al.
(hereinafter "Corby")
Kohls et al.
(hereinafter "Kohls")
The Cited References
us 6,078,904
US 2002/0032644 Al
US 7 ,020,632 B 1
The Rejections
Jun.20,2000
Mar. 14, 2002
Mar. 28, 2006
The Appellant seeks review of the following rejections:
I. The rejection of claims 250 and 251 under 35 U.S.C. § 103(a)
2
Appeal2013-008446
Application 13/135,456
as unpatentable over Kohls and Rebane. 2 Final Action 6-8.
II. The rejection of claim 252 under 35 U.S.C. § 103(a) as
unpatentable over Kohls, Rebane and Corby. Final Action 8-9.
III. The rejection of claim 253 under 35 U.S.C. § 103(a) as
unpatentable over Kohls, Rebane and Corby. Final Action 8-9.
IV. The rejection of claims 254 and 255 under 35 U.S.C. § 103(a)
as unpatentable over Kohls, Rebane and Corby. Final Action 8-10.
V. The rejection of claim 256 under 35 U.S.C. § 103(a) as
unpatentable over Kohls, Rebane and Corby. Final Action 8-10.
VI. The rejection of claim 257 under 35 U.S.C. § 103(a) as
unpatentable over Kohls, Rebane and Corby. Final Action 8-10.
VII. The rejection of claims 258 and 259 under 35 U.S.C. § 103(a)
as unpatentable over Kohls, Rebane and Corby. Final Action 8-11. 3
FACTUAL FINDINGS
We adopt aH the Examiner's findings as our own. Answer 4--16.
Additional findings of fact may appear in the Analysis that follows.
2 In addition to Kohls and Rebane, the Final Action also lists Corby as being
among the references relied upon for rejecting claims 250 and 251. Final
Action 6. Corby is similarly identified in regard to the rejection of claims
250 and 251 in the Answer. Answer 4. It appears that the inclusion of
Corby, in both instances, was erroneous because the Examiner's respective
analyses do not discuss Corby.
3 The Appellant contended that claims 254--259 were allowable for the same
reasons offered as to claim 253 (Appeal Br. 7), but proceeded to make
additional arguments as to claims 254--257 (Appeal Br. 7-8), which are
addressed as Rejections IV-VI herein.
3
Appeal2013-008446
Application 13/135,456
ANALYSIS
Rejection I
In regard to Rejection I, the Appellant has grouped claims 250 and
251 together. Appeal Br. 3---6. The discussion herein is directed to claim
250 alone. See 37 C.F.R. § 41.37(c)(l)(iv).
Based upon four reasons presented in the Appeal Brief, each of which
is addressed in tum below, the Appellant (Appeal Br. 4--6) contends that the
Examiner's proposed combination of Kohls and Rebane does not disclose or
suggest the "processor configured to ... output an investment amount as a
function of the selected outcome, the specified payout and a total amount
invested in the plurality of states" of claim 250 (Appeal Br. 10, Claims
App.). In addition, the Appellant's Reply Brief introduces a new argument
in favor of claim 250. Reply Br. 3.
First, the Appellant contends that Kohls does not disclose or suggest
the iimitation. Appeai Br. 4--5; Repiy Br. 3. However, the rejection is based
upon a combination of Kohls with Re bane, not Kohls alone, and the
Examiner (Final Action 7) did not rely upon Kohls alone for the teaching of
the limitation in question. "[O]ne cannot show non-obviousness by
attacking references individually where, as here, the rejections are based on
combinations of references." In re Keller, 642 F.2d 413, 426 (CCPA 1981)
(citation omitted).
Thus, the Appellant's first argument does not address the substance of
the Examiner's reasoning and is not persuasive.
Second, the Appellant (Appeal Br. 5) contends that Rebane does not
disclose or suggest the limitation at issue. According to the Appellant:
4
Appeal2013-008446
Application 13/135,456
The cited portion of the Rebane reference describes a user
interface that "graphically displays for each investment in the
portfolio the allocation of the investment assets to the selected
securities in terms of both monetary and percentage
allocations." Nowhere does the Rebane reference disclose or
suggest that this allocation of investment assets is a function of
the selected outcome, the specified payout, and a total amount
invested in the plurality of states (and the Examiner does not
expressly refer to any cited portion of the Rebane reference as
disclosing these limitations).
Appeal Br. 5. See also Reply Br. 4.
The Appellant here focuses on one aspect of Rebane alone, rather than
more directly applicable portions of Rebane or the combined teachings of
Rebane and Kohls, as cited by the Examiner. The Examiner found that
Kohls teaches claim 250's receipt of a "selected outcome" and a "specified
payout" for an investment order. Final Action 7; Answer 5. The Examiner
also found that Rebane teaches the creation of a risk tolerance function
("RTF") for an individual investor to define risk preferences in advance of
optimizing an investment portfolio for that investor. Final Action 7-8;
Answer 5. Rebane's RTF is used to output proposed investment allocations
(see Rebane col. 1, 11. 1-18; col. 6, 11. 19-38) based upon multiple factors,
including the expected monetary value of assets (see id. at col. 5, 11. 17-31)
- i.e., information corresponding to claim 250's "selected outcome" and
"specified payout" - and the net investable assets (see id. at col. 5, 11. 4--5)-
i.e., information corresponding to claim 250's "total amount invested in the
plurality of states."
Thus, the Appellant has not shown any error in the Examiner's
determination that Kohls and Rebane together disclose the features of claim
250 's "processor configured to ... output an investment amount as a
5
Appeal2013-008446
Application 13/135,456
function of the selected outcome, the specified payout and a total amount
invested in the plurality of states" of claim 250 (Appeal Br. 10, Claims
App.). Accordingly, the Appellant's second argument is not persuasive.
Third, the Appellant contends that Rebane suggests the "opposite" of
the limitation. Appeal Br. 5-6. Specifically, the Appellant argues:
[T]he cited portion of the Rebane reference actually states, at
8:34--36, that "[t]here is also displayed a graphical
representation of the expected return of the portfolio given the
investment allocation." Thus, in contrast to claim 250, which
recites the output of an investment amount as a function of,
inter alia, the specified payout, the Rebane reference describes
the output of an expected return given the investment
allocation, i.e., the reverse of the feature of claim 250.
Id. at 5. See also Reply Br. 4.
As in the Appellant's second argument (discussed above), the
Appellant concentrates on Rebane' s disclosure of "a graphical representation
of the expected return of the portfolio given the investment allocation"
(Re bane col. 8, 11. 34--36), but does not address aspects of Rebane more
relevant to the claimed "processor configured to ... output an investment
amount" (Appeal Br. 10, Claims App.) of claim 250. In particular, the
Appellant does not address those aspects of Rebane identified by the
Examiner that instruct an investor in the "selection, analysis of investments
and the allocation of investment assets among investments." Final Action
7 (citing Rebane col. 1, 11. 10-18) (emphasis added). As explained above, in
regard to the Appellant's second argument on claim 250, such teachings of
Rebane specifically concern the determination of how much money an
investor should pay for a particular investment - the same issue involved in
6
Appeal2013-008446
Application 13/135,456
claim 250's "output [of] an investment amount" (Appeal Br. 10, Claims
App.).
Accordingly, we disagree with the Appellant's contention that Rebane
teaches the "opposite" (Appeal Br. 5-6) of claim 250's "processor
configured to ... output an investment amount," as it is based upon an
incomplete depiction of Rebane's disclosure. Therefore, the Appellant's
third argument is not persuasive.
Fourth, the Appellant contends that Kohls and Rebane may not be
combined because Kohls "describes matched bid prices for contracts but the
price of the contract on which the parties are bidding remains fixed," such
that the resulting combination would constitute "[a] graphical representation
of this fixed return," which "would be superfluous." Appeal Br. 6. See also
Reply Br. 4.
As an initial matter, the alleged "superfluous[ ness ]" of the proposed
combination does not constitute a reason why the teachings of Kohis and
Rebane could not be combined. After all, even actual disadvantages that
might arise from combining references need not preclude a particular
combination. See, e.g., Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165
(Fed. Cir. 2006) ("[A] given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine.") (citation omitted). Even so, the Appellant does not
allege that any disadvantage actually arises from the combination of Kohls
with Rebane.
Moreover, combining the teachings of Kohls and Rebane would not
necessarily result in the allegedly "superfluous" feature because such a
combination may, as the Examiner explains (Answer 6), graphically
7
Appeal2013-008446
Application 13/135,456
represent the expected performance for a portfolio of investments
undertaken with the Kohls system - as opposed to the value of only a single
contract. Indeed, Kohls contemplates the graphical representation of
"account balances, net positions, profit and loss." Kohls col. 12, 11. 1-2.
Accordingly the Appellant's fourth argument is not persuasive.
In addition to the four arguments set forth in the Appeal Brief, the
Appellant introduces a new argument in the Reply Brief. There, the
Appellant (Reply Br. 3) disputes the Examiner's finding that Kohls teaches
claim 250's "indication of a specified payout" (Appeal Br. 10, Claims App.),
which the Examiner identified as Kohls' fixed contract payment (see Final
Action 6-7, citing Kohls col. 7, 11. 24--40, col. 8, 11. 18-31; Answer 5, 10,
additionally citing Kohls col. 7, 11. 12-23). The Appellant contends that
Kohls "describes a system in which users input a bid price, and not a
specified payout." Reply Br. 3. Because the Appellant did not challenge
this finding in the Appeal Brief~ the Appellant may not address this issue for
the first time in the Reply Brief. See 37 C.F.R. § 41.41(b)(2).
Nonetheless, the Appellant's argument does not reveal any error on
the part of the Examiner. Contrary to the Appellant's contention (Reply Br.
3), claim 250 does not require "users" to "input" anything; claim 250 simply
calls for a "processor configured to ... receive ... an indication of a
specified payout." Appeal Br. 10, Claims App. The Appellant similarly
misapprehends Kohls, by asserting that "[ u ]sers inform the system of the
Kohls reference how much they want to bid; not how much they want in
return." Reply Br. 3. Yet, Kohls (e.g., Kohls col. 7, 11. 12-23) involves a
defined fixed payout for each contract, thus providing "an indication of a
specified payout" as set forth in the claim.
8
Appeal2013-008446
Application 13/135,456
In view of the foregoing analysis, the Examiner's rejection of claim
250 is sustained. Because claim 251 was grouped together on appeal with
claim 250, the Examiner's rejection of claim 251 is sustained, as well.
Re} ections II, III and VII
The Appellant argues that the rejections of claims involved in
Rejection II (claim 252), Rejection III (claim 253) and Rejection VII (claims
258 and 259) were in error for the same reasons set forth as to claim 250.
Appeal Br. 6-7. Thus, these claims stand or fall with claim 250. Because
the rejection of claim 250 is sustained herein, the rejections of claims 252,
253, 258 and 259 are also sustained.
Rejection IV
In regard to Rejection IV, the Appellant has grouped claims 254 and
255 together. Appeal Br. 7. The discussion herein is directed to claim 254
alone. See 37 C.F.R. § 41.37(c)(l)(iv).
The Appeiiant contends (Appeai Br. 7) that the cited references do not
teach claim 254' s limitation of "determining the total amount invested as a
function of respective selected outcomes and specified payouts of a plurality
of orders."
In response, the Examiner explained how Kohls' disclosure meets the
limitation at issue:
Examiner maintains that a bid placed on one side of the
contract and a second. complementary bid on the opposing side
ofthe contract are indicative of Appellant's total amount
invested in the plurality of states in that each bid on each side of
the contract specifies a set number of contract units and a bid
price.
Answer 15 (citing Kohls col. 7 lines 12--40).
9
Appeal2013-008446
Application 13/135,456
In the Reply Brief, the Appellant argued that the Examiner's
explanation in the Answer "improperly focuses solely on one matched
contract as the total amount invested" because "[t]he total amount invested
in such a scheme relates to the many matched contracts, and is a function of
the total number of matched bids, and the fixed face value of each contract."
Reply Br. 5.
Although the Appellant refers to "the many matched contracts," the
limitation of claim 254 at issue actually recites "a plurality of orders."
Appeal Br. 11, Claims App. The term "plurality" simply means "two or
more." Dayco Prods., Inc. v. Total Containment, Inc., 258F.3d1317, 1327-
28 (Fed. Cir. 2001) (citation omitted). Because the Examiner's example
from Kohls involved two bids ("a bid placed on one side of the contract and
a second. complementary bid on the opposing side of the contract"), where
"each bid on each side of the contract specifies a set number of contract
units'' (Answer 15), the Examiner's example possesses the claimed
"plurality of orders."
Accordingly, the Appellant's argument as to claim 254 is not
persuasive.
The Examiner's rejection of claim 254 is sustained. Because claim
255 was grouped together on appeal with claim 254, the Examiner's
rejection of claim 255 is sustained, as well.
Rejection V
Claim 256 depends from claim 253 and sets forth the following
language:
[I]f the selected outcome in the order becomes an observed
outcome of the event, determining an executed payout for the
10
Appeal2013-008446
Application 13/135,456
order, as a function of specified payouts, selected outcomes,
and investment amount limits of a plurality of orders.
Appeal Br. 12, Claims App.
In rejecting claim 256, the Examiner said that the claim "is not further
limiting of claim 253, the claim upon which it depends." Final Action 10.
The Appellant disagreed, arguing that claim 256 "further limits claim
253 because it requires that the executed payout is determined as a function
of desired payouts, selected outcomes, and investment amount limits of a
plurality of orders." Appeal Br. 8.
In response, the Examiner explained that the features added by claim
256 are nevertheless met by Kohls, such that the subject matter of claim 256
would have been obvious. Answer 15 (citing Kohls col. 7, 11. 12--40).
In the Reply Brief, the Appellant contends that Kohls "does not
disclose a user's specification of payouts, and instead only discloses the
user's specification of a bid price" - pointing out that the Appellant had
raised this same alleged shortcoming of Kohls, earlier in the Reply Brief (at
page 3), in regard to claim 250. Reply Br. 6. But claim 256 does not recite
the limitation of claim 250 to which the Appellant refers - a "processor
configured to ... receive ... an indication of a specified payout." See Reply
Br. 3, 6; Appeal Br. 10-12 Claims App. Nor does claim 256 depend from
claim 250; claim 256 depends instead from independent claim 253, which
contains a similar limitation ("receiving ... an indication of a specified
payout"). Appeal Br. 11-12 Claims App. Thus, the Appellant's argument
here is properly directed to claim 253, not claim 256. In addition, as
discussed above (in Rejection I) regarding the "specified payout" feature of
claim 250, the Appellant is foreclosed under 37 C.F .R. § 41.41 (b )(2) from
11
Appeal2013-008446
Application 13/135,456
introducing this argument in the Reply Brief, as the Appellant has done,
where the Examiner had already stated that Kohls disclosed the "specified
payout" feature of claim 253 in the Final Action. Final Action 6-7, 9. In
any event, the argument raised in regard to claim 250 (see Reply Br. 3),
which the Appellant would re-apply to claim 256, has already been
determined to be unpersuasive herein. As discussed above, in regard to
Rejection I, the disclosure of a defined fixed payout in Kohls (see, e.g., col.
8, 11. 18-31) satisfies claim 250's requirement of a "processor configured
to ... receive ... an indication of a specified payout" (Appeal Br. 10,
Claims App.).
The Appellant (Reply Br. 6) also criticizes the Examiner's argument
that the "executed payout" feature of claim 256 is met by the fixed contract
value in Kohls (see Answer 15). The Examiner equated claim 256's
"executed payout" with the "fixed value of the contract" in Kohls (Answer
15) - the same element of Kohls that the Examiner (Final Action 6-7, 9)
identified as the "specified payout" of claim 253, which "is paid after and
conditional upon occurrence of the selected outcome of the event of
economic significance" (Appeal Br. 11, Claims App.). In response to the
Examiner, the Appellant argues that "the fixed value of the contract [in
Kohls] is just that- fixed," such that "[i]t is not determined as a function of
specified payouts, selected outcomes, and investment amount limits of a
plurality of orders." Reply Br. 6.
Yet, the Appellant neither disputes nor offers any alternative to the
Examiner's interpretation of the "executed payout" (of claim 256) as being
the "specified payout" (of claim 253) that is paid "upon occurrence of the
selected outcome." See Appeal Br. 11-12, Claims App. Nor does the
12
Appeal2013-008446
Application 13/135,456
Specification reveal any other interpretation of the "executed payout."
Based upon the Examiner's interpretation of the "executed payout," claim
256 suffers from the very conundrum that the Appellant ascribes to the
Examiner's argument regarding Kohls- i.e., the "executed payout for the
order" of claim 256 cannot be "determin[ ed] ... as a function of specified
payouts, selected outcomes, and investment amount limits of a plurality of
orders" if the "specified payout for an investment order" "is paid," per claim
253. Appeal Br. 11-12, Claims App. (emphasis added). Accordingly, the
meaning of the limitation added by claim 256 is unclear and the scope of the
claim cannot be determined.
Where claims do not particularly point out and distinctly claim the
invention as required by the second paragraph of 35 U.S.C. § 112, a
rejection of the claims as obvious (under 35 U.S.C. § 103) must be reversed
as impermissibly involving speculative assumptions as to the meaning of the
claims. In re Steele, 305 F.2d 859, 862---63 (CCPA 1962). "If no reasonably
definite meaning can be ascribed to certain terms in the claim, the subject
matter does not become obvious -the claim becomes indefinite." In re
Wilson, 424 F.2d 1382, 1385 (CCPA 1970).
Therefore, the rejection under 35 U.S.C. § 103(a) of claim 256 is
reversed, proforma. Pursuant to 3 7 C.F .R. § 41. 50(b ), claim 25 6 is hereby
rejected under 35 U.S.C. § 112, second paragraph, as being indefinite,
because the precise meaning of the limitation introduced in claim 256 cannot
be determined.
13
Appeal2013-008446
Application 13/135,456
Rejection VI
In rejecting claim 257, the Examiner said that the claim "is not further
limiting of claim 253, the claim upon which it depends in as much it is the
repetition of steps which does not add patentable weight." Final Action 10.
The Appellant (Appeal Br. 8) countered that claim 257 does further
limit claim 253, referring to the language of claim 257 (Appeal Br. 12,
Claims App.) specifying that claim 253 's step of "determining an investment
amount"
includes determining a respective investment amount for each
of the respective specified plurality of states, such that a same
payout for the respective order is executed regardless of which
of the respective specified states is identified to correspond to
an observed outcome of the event of economic significance.
In response, the Examiner maintained the position that the language of
claim 257 did not further limit the scope of its base claim 253 and also stated
that, in any event, the limitations recited in claim 257 are taught by Kohls,
such that the claimed subject matter would have been obvious. Answer 8,
16.
In the Reply Brief, the Appellant argues that Kohls fails to teach the
subject matter added by claim 257:
[A ]s discussed above in support of the patentability of claim
250, however, the Kohls reference describes a user's input of a
bid price, and not the determination of an investment amount.
Accordingly, the Kohls reference does not disclose or suggest
determining a respective investment amount for each of the
respective specified plurality of states.
Reply Br. 6.
The Appellant's reference back to an argument in support of claim
250 is misplaced for two reasons. First, the Appellant's argument is not
14
Appeal2013-008446
Application 13/135,456
directed to the subject matter added by claim 257, but is instead directed to
the "determining ... an investment amount" introduced in the claim from
which it depends (Appeal Br. 11, Claims App.). Second, claim 257 does not
depend from claim 250; rather, claim 257 depends from independent claim
253 (Appeal Br. 12, Claims App.). Nevertheless, as explained above (in
regard to Rejection I) the Appellant's argument (see Appeal Br. 4--5; Reply
Br. 3) that Kohls does not teach claim 250's "processor configured
to ... output an investment amount" was determined to be unpersuasive
because the Examiner correctly determined that the limitation was met by a
combination of Kohls and Rebane (see Final Action 7; Answer 13-14 ).
Accordingly, the Appellant's argument as to claim 257 is
unpersuasive and the Examiner's rejection is sustained.
DECISION
We AFFIRM the Examiner's decision rejecting claims 250--'255 and
257-259 under 35 U.S.C. § 103(a).
We REVERSE the Examiner's decision rejecting claim 256 under 35
U.S.C. § 103(a).
We ENTER A NEW GROUND OF REJECTION for claim 256 under
35 U.S.C. § 112, second paragraph.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides that "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
15
Appeal2013-008446
Application 13/135,456
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record ....
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART, 37 C.F.R. § 41.50(b)
16