Ex Parte Phillips et al

Board of Patent Appeals and Interferences

Jan 13, 2009

09615021 (B.P.A.I. Jan. 13, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte G. MICHAEL PHILIPS, M. CHAPMAN FINDLAY, III,
STEPHEN A KLEIN, WILLIAM P. JENNINGS, and MARK E. RICE
____________

Appeal 2008-4064
Application 09/615,021
Technology Center 3600
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Decided: January 13, 2009
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Before HUBERT C. LORIN, ANTON W. FETTING, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1-27, 37, and 39. Claims 28-36 and 40 have been
canceled. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

Appeal 2008-4064
Application 09/615,021
SUMMARY OF THE DECISION
We REVERSE.
THE INVENTION
The Appellants’ claimed invention is directed to providing an asset
evaluation/screening tool in which different economic scenarios can be
specified and elasticities, sensitivities or similar measures of tendency of the
asset value to change based on changes in one or more exogenous variables
can be projected under such different scenarios. Such data can then be used
to screen or otherwise evaluate assets. (Specification, 1:29-2:2). Claim 1,
reproduced below, is representative of the subject matter of appeal.

1. A method for evaluating an asset, said method comprising:
using at least one computer to:

(a) process historical data for value of an asset and historical
data values for plural exogenous variables to obtain a formula for
calculating a measure of a tendency of the value of the asset to
change as a result of changes in the data values for the exogenous
variables, wherein said formula is a function of the exogenous
variables;

(b) input projected data values for the exogenous variables; and

(c) estimate a measure of the tendency of the value of the asset
to change based on a change in at least one of the exogenous
variables using the formula obtained in step (a) and the projected
data values input in step (b),

wherein the asset can be purchased by an owner.

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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Lambert US 3,270,190 Aug. 30, 1996
Bekaert US 6,125,355 Sept. 26, 2000
Rebane US 6,405,179 B1 Jun. 11, 2002
Garg US 6,144,945 Nov. 7, 2000
Goertzel US 6,532,449 B1 Mar. 11, 2003
Makridakis, “Forecasting Methods and Applications”, John Wiley & Sons,
Third Edition, 1988, pp 211-227, 241-260, and 433-439.

The following rejections are before us for review:
1. Claims 1-2, 6-7, 14, 37, and 39 are rejected under 35 U.S.C. §
102(b) as anticipated by Lambert.
2. Claims 3-5, 12-13, and 21 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Lambert in view of Bekaert.
3. Claims 8-9, 15-18, and 22-26 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lambert in view of Makridakis.
4. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lambert in view of Rebane.
5. Claim 11 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lambert in view of Rebane and Garg.
6. Claim 27 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Lambert in view of Goertzel.
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7. Claims 19-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Lambert in view of Ray.

THE ISSUE
The issue is whether the Appellants have shown that the Examiner
erred in rejecting the claims in the aforementioned rejections.
This issue turns on whether Lambert discloses “obtaining a formula
for calculating a measure of a tendency of the value of the asset to change as
a result of changes in the data values for the exogenous variables”.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence1:
FF1. Lambert at Column 1, lines 31-35 determines the estimated future
price of the stock where P = AV1 + BV2 + CV3 + DV4 + EV5 +/- K. In this
formula P is the price of the stock, V1-V5 are variables and A-E are
multiplying coefficients.
FF2. The formula of Lambert (FF1) is used as a model to predict an
expected high price and low price for a desired stock (Col 1:42-46).
FF3. Lambert fails to disclose obtaining a formula for calculating a
measure of a tendency of the value of the asset to change as a result of
changes in the data values for the exogenous variables (Col. 1:9-70).

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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FF4. Bekaert fails to disclose obtaining a formula for calculating a measure
of a tendency of the value of the asset to change as a result of changes in the
data values for the exogenous variables. Bekaert does disclose providing
sensitivity data for particular input data such as input rates (Col. 4:24-34) but
no formula for the overall tendency is disclosed.
FF5. The Examiner has not asserted that Rebane discloses obtaining a
formula for calculating a measure of a tendency of the value of the asset to
change as a result of changes in the data values for the exogenous variables.
FF6. The Examiner has not asserted that Garg discloses obtaining a formula
for calculating a measure of a tendency of the value of the asset to change as
a result of changes in the data values for the exogenous variables.
FF7. The Examiner has not asserted that Goertzel discloses obtaining a
formula for calculating a measure of a tendency of the value of the asset to
change as a result of changes in the data values for the exogenous variables.
FF8. Makridakis discloses forecasting methods based on regression
analysis.
FF9. Makridakis does not disclose obtaining a formula for calculating a
measure of a tendency of the value of the asset to change as a result of
changes in the data values for the exogenous variables.

PRINCIPLES OF LAW
Principles of Law Relating to Anticipation
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
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628, 631, (Fed. Cir. 1987). Analysis of whether a claim is patentable over
the prior art under 35 U.S.C. § 102 begins with a determination of the scope
of the claim. We determine the scope of the claims in patent applications
not solely on the basis of the claim language, but upon giving claims their
broadest reasonable construction in light of the Specification as it would be
interpreted by one of ordinary skill in the art. In re Am. Acad. of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The properly interpreted claim
must then be compared with the prior art.

Principles of Law Relating to Obviousness
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18,
(1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”) In KSR, the Supreme Court
emphasized “the need for caution in granting a patent based on the
combination of elements found in the prior art,” id. at 1739.

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ANALYSIS
The Appellants argue that the rejection of claims 1, 37, and 39 under
35 U.S.C. § 102(b) as anticipated by Lambert is improper because the
reference fails to disclose the claimed feature of “obtaining a formula for
calculating a measure of a tendency of the value of the asset to change as a
result of changes in the data values for the exogenous variables” (Br. 10,
Reply Br. 2). The Appellants argue that such a formula is clearly different
than the price estimate formula disclosed in Lambert (Reply Br. 2).
The Examiner has determined that Lambert does disclose obtaining a
formula for calculating the tendency of the value of the asset to change as a
result of the change in data values for the exogenous variables (Ans. 3). The
Examiner has determined that one of ordinary skill in the art would
understand that the formula disclosed in Lambert at Column 1, lines 31-35,
provides such a formula (Ans. 10).
We agree with the Appellants. The formula obtained in Lambert at
Column 1, lines 31-35 determines the estimated future price of the stock
where P = AV1 + BV2 + CV3 + DV4 + EV5 +/- K. In this formula P is the
price of the stock, V1-V5 are variables and A-E are multiplying coefficients
(FF1). This disclosed formula of Lambert is used as a model to predict an
expected high price and low price for a desired stock (FF2). This formula is
used to predict stock prices not the “tendency of the value of the asset to
change as a result of changes in the data values for the exogenous variables”
as required by claims 1, 37, and 39. There is a clear distinction between the
“price of an asset” and the “tendency of the value of the asset to change”.
One of ordinary skill in the art would recognize that the “tendency of the
value of an asset to change” referred to asset volatility, sensitivities, or
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similar variables as opposed to the raw asset price. The claim also requires
that the formula “result of changes in the data values for the exogenous
variables”. As Lambert fails to disclose this claimed limitation, the rejection
of claims 1, 37, and 39 under 35 U.S.C. § 102(b) as anticipated by Lambert
is not sustained. The rejection of dependent claims 2, 6-7, and 14 under 35
U.S.C. § 102(b) as anticipated by Lambert is not sustained for the same
reasons.
The rejection of claims 3-5, 12-13, and 21 under 35 U.S.C. § 103(a) as
unpatentable over Lambert in view of Bekaert is not sustained as the Bekaert
reference fails to cure the deficiency in the base rejection addressed above.
The rejection of claims 8-9, 15-18, and 22-26 under 35 U.S.C.
§ 103(a) as unpatentable over Lambert in view of Makridakis is not
sustained as the Makridakis reference fails to cure the deficiency in the base
rejection addressed above. Makridakis discloses forecasting methods based
on regression analysis (FF8). Makridakis does not discloses obtaining a
formula for calculating a measure of a tendency of the value of the asset to
change as a result of changes in the data values for the exogenous variables
(FF9). One of ordinary skill in the art would recognize that the “tendency of
the value of an asset to change” as required in the formula of claim 1 is
different than the method of regression analysis in Makridakis. For this
reason the rejection of claims 8-9, 15-18, and 22-26 under 35 U.S.C.
§ 103(a) as unpatentable over Lambert in view of Makridakis is not
sustained.
The Appellants have shown that the Examiner erred in rejecting 10
under 35 U.S.C. § 103(a) as unpatentable over Lambert in view of Rebane
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and this rejection is not sustained as the Rebane reference fails to cure the
deficiency in the base rejection addressed above.
The Appellants have shown that the Examiner erred in rejecting claim
11 under 35 U.S.C. § 103(a) as unpatentable over Lambert in view of
Rebane and Garg and this rejection is not sustained as the Rebane and Garg
references fail to cure the deficiency in the base rejection addressed above.
The Appellants have shown that the Examiner erred in rejecting claim
27 under 35 U.S.C. § 103(a) as unpatentable over Lambert in view of
Goertzel and this rejection is not sustained as the Goertzel reference fails to
cure the deficiency in the base rejection addressed above.
The Appellants have shown that the Examiner erred in rejecting
claims 19-20 under 35 U.S.C. § 103(a) as unpatentable over Lambert in view
of Ray and this rejection is not sustained as the Ray reference fails to cure
the deficiency in the base rejection addressed above.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 1-2, 6-7, 14, 37, and 39 under 35 U.S.C. § 102(b) as
anticipated by Lambert.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 3-5, 12-13, and 21 under 35 U.S.C. § 103(a) as unpatentable
over Lambert in view of Bekaert.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 8-9, 15-18, and 22-26 under 35 U.S.C. § 103(a) as
unpatentable over Lambert in view of Makridakis.
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We conclude that Appellants have shown that the Examiner erred in
rejecting claim 10 under 35 U.S.C. § 103(a) as unpatentable over Lambert in
view of Rebane.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 11 under 35 U.S.C. § 103(a) as unpatentable over Lambert
in view of Rebane and Garg.
We conclude that Appellants have shown that the Examiner erred in
rejecting claim 27 under 35 U.S.C. § 103(a) as unpatentable over Lambert in
view of Goertzel.
We conclude that Appellants have shown that the Examiner erred in
rejecting claims 19-20 under 35 U.S.C. § 103(a) as unpatentable over
Lambert in view of Ray.

DECISON
The Examiner’s rejection of claims 1-27, 37, and 39 is not sustained.

REVERSED

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LV:

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