Ex Parte ZhangDownload PDFBoard of Patent Appeals and InterferencesMay 4, 201109895690 (B.P.A.I. May. 4, 2011) Copy Citation 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. 09/895,690 06/29/2001 Alex Xin Zhang 10010296 6868 7590 05/04/2011 HEWLETT-PACKARD COMPANY Intellectual Property Administration P.O. Box 272400 Fort Collins, CO 80527-2400 EXAMINER MERCHANT, SHAHID R ART UNIT PAPER NUMBER 3694 MAIL DATE DELIVERY MODE 05/04/2011 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 ALEX XIN ZHANG ____________ Appeal 2010-003505 Application 09/895,690 Technology Center 3600 ____________ Before: MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and MICHAEL W. KIM, Administrative Patent Judges. KIM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-003505 Application 09/895,690 2 STATEMENT OF THE CASE This is an appeal from the final rejection of claims 25-45. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6. The claimed invention is generally directed to methods and systems for auction-based simulation to extract a demand curve (Spec. 1:5-7). Claim 25, reproduced below, is further illustrative of the claimed subject matter. 25. A computer-implemented method for analyzing new auction formats and rules comprising: estimating, performed by a computer system, bidder characteristics associated with potential auction participants; estimating, performed by said computer system, a value of an outcome of a market transaction to generate an estimated value; accessing, performed by said computer system, a set of new auction rules and formats; accessing, performed by said computer system, data from a previous auction, said data associated with at least one of said auction rules and formats; modeling, performed by said computer system, a new auction using said new auction rules, said formats and said bidder characteristics to generate a post modeled auction value; comparing, performed by said computer system, said post modeled auction value with said estimated value; and modifying, performed by said computer system, said bidder characteristics and repeating said modeling, said comparing and said modifying until said post modeled auction value is said estimated value.1 1 We refer to the claims set forth in the Amendment and Response to Final Office Action under 37 C.F.R. § 1.116(b) filed September 11, 2009, and entered by the Examiner in the Office Communication mailed January 28, 2010. We do not refer to the claims set forth in the Appendix of the Appeal Brief filed September 11, 2009. Appeal 2010-003505 Application 09/895,690 3 Claims 25-45 stand rejected under 35 U.S.C. § 112, first paragraph, for lack of enablement; claims 25, 29-31, 32, 36-38, 39, and 43-45 stand rejected under 35 U.S.C. § 103(a) as unpatentable over White (US Pat. 6,088,676, iss. Jul. 11, 2000) in view of Hammond (US Pub. 2002/0082977 A1, pub. Jun. 27, 2002); and claims 26-28, 33-35, and 40-42 stand rejected under 35 U.S.C. § 103(a) as unpatentable over White in view of Hammond and Takriti (US Pat. 5,974,403, iss. Oct. 26, 1999). We REVERSE. ISSUES Did the Examiner err in asserting that claims 25-45 are not enabled under 35 U.S.C. § 112, first paragraph, because it is unclear what values the recited notation sequence g1, g2,…, gk represent? Did the Examiner err in asserting that a combination of White and Hammond renders obvious “modifying, performed by said computer system, said bidder characteristics and repeating said modeling, said comparing and said modifying until said post modeled auction value is said estimated value,” as recited in independent claims 25, 32, and 39? FINDINGS OF FACT Specification The Specification discloses that in one embodiment, g1, g2,…, gk represent new auction outcomes, where auction outcome g1 refers to the highest bid; g2 refers to the number of recorded bidders; g3 refers to the number of rejected bids; and gk refers to the second highest bid (16:6-8; 17:5). Appeal 2010-003505 Application 09/895,690 4 The Specification also discloses that in step 406, it is determined whether the newly recorded auction outcomes g1, g2,..., gk are tolerably close to recorded auction data for statistical confidence. If not, process 400 loops back to repeat step 403 and subsequent steps, until statistical confidence is obtained. In one embodiment, it may be typical to loop through repeating steps 403-406 on the order of 10,000 times to achieve a satisfactory statistical confidence level (17:7-12). The Specification further discloses that if the known bidder characteristic f and/or auction outcome g is not found to be tolerably close to the observed values (step 408), then it is determined whether the assumed bidder characteristics f1, f2,..., fn agree with the outcome. If they do not, bidder characteristics f1, f2,..., fn are revised based on the sign and difference of the recorded bidder characteristics f and auction outcomes g to the known bidder characteristics f and auction outcomes g. Again, for the example of g2 = 80 bidders, if the recorded number of bidders is 70, then the total bidding population size (fn) or the percentage of bidders in a particular price level (e.g., fl) would be increased (18:5-13). White White discloses that at block 28, the relevant data Z, from the past are specified, wherein t represents a data index, such as a time period from 1 to T + τ. According to White, each data point Zt is a vector of “‘dependent’” variables (those to be predicted) and “independent” variables (those to be used for prediction). For example, when the prediction models under test are stock market prediction models, the data points Zt might include stock Appeal 2010-003505 Application 09/895,690 5 market returns as a dependent variable and price trends, high/low prices, returns on investment, price per earnings ratio, and so on as independent variables (col. 7, ll. 13-22). At block 30, an integer number P of prediction observation indices are specified. According to White, each index t corresponds to an observed data point (such as a past time period), wherein t=R,…, T and thus P=T-R+1. As disclosed in detail below with reference to Figure 4, the data identified at block 28 is associated with its appropriate data index R,...,T in a primary data matrix. Essentially, the data indices R,...,T define respective matrix row indices (col. 7, ll. 23-30). White then discloses that the process then moves to block 32, wherein a method is specified for generating model specifications indexed by model indices k, wherein k is an integer=0,...,1. In other words, at block 32, a method is specified for generating "1" prediction models (col. 7, ll. 31-35). Moving to block 86, White discloses an efficacy factor p, which is a statistic that represents the statistical significance of the effectiveness of the best among the k prediction models relative to the benchmark, is determined. White discloses that the efficacy factor p is the difference between unity and the ratio of n to the total number of observation matrices. The efficacy factor p is an estimate of a “p-value” associated with a statistical test of a formal hypothesis that a best prediction model has expected performance no better than that of a benchmark. The efficacy factor varies between zero and one; the more statistically significant the “best” model vis-a-vis the benchmark, the lower the p-value (col. 10, ll. 7-19). The logic then moves to block 88 of White to increment k by one, and then tests whether the last model has been evaluated at decision diamond 90. Appeal 2010-003505 Application 09/895,690 6 If not, the logic loops back to block 72. Otherwise, the model ends at state 92 and returns the final value of the efficacy factor p (col. 10, ll. 20-24). ANALYSIS Enablement We are persuaded the Examiner erred in asserting that claims 25-45 are not enabled under 35 U.S.C. § 112, first paragraph, because it is unclear what values the recited notation sequence g1, g2,…, gk represent (App. Br. 8-12; Reply Br. 1-2). The Examiner is correct that usually, a sequence notation of g1, g2,…, gk would represent different values having the same format, e.g., they all represent different values of dollars (Exam’r’s Ans. 9- 11). However, Appellant is entitled to be his/her own lexicographer, and the Specification clearly defines g1, g2,…, gk as various new auction outcomes, such as bids and bidders. See In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (inventor may define specific terms used to describe invention, but must do so “with reasonable clarity, deliberateness, and precision” and, if done, must “set out his uncommon definition in some manner within the patent disclosure' so as to give one of ordinary skill in the art notice of the change” in meaning) (quoting Intellicall, Inc. v. Phonometrics, Inc., 952 F.2d 1384, 1387-88 (Fed. Cir. 1992)). While Appellant’s use of such a sequence notation may be unorthodox, it is enabling. Upon reading the Specification, one of ordinary skill would understand that changing bidder characteristics f1, f2,…, fn, one ends up with different new auction outcomes g1, g2,…, gk, where n and k are decoupled (i.e., f1 and g1 can have unrelated values and formats). Appeal 2010-003505 Application 09/895,690 7 The Examiner also asserts that by using the sequence notation g1, g2,…, gk, Appellant is admitting that g4, g5,…, gk exist, yet, because of the unorthodox format, one of ordinary skill does not know what kind of format/value to apply to notations following g3 (Exam’r’s Ans. 9-11). However, Appellant has defined g3, which could potentially be the only notation between g2 and gk. Accordingly, while again, unorthodox, Appellant’s disclosure of at least one intermediate notation, g3, means that the Specification is enabled with respect to the sequence notation g1, g2,…, gk. Obviousness We are persuaded the Examiner erred in asserting that a combination of White and Hammond renders obvious “modifying, performed by said computer system, said bidder characteristics and repeating said modeling, said comparing and said modifying until said post modeled auction value is said estimated value,” as recited in independent claims 25, 32, and 39 (App. Br. 13-25; Reply Br. 2-5). Essentially, the aforementioned portions of independent claims 25, 32, and 39 disclose holding the new auction rules and formats (model) constant, and modifying the bidder characteristics (variables) until a desired outcome (estimated value) is reached. By contrast, White discloses holding the relevant data Z (variables) constant, and plugging this relevant data Z into different models k by regularly increasing k by 1 in block 88, until the best efficacy factor p is calculated for a particular model k given relevant data Z. Accordingly, because independent claims 25, 32, and 39 and White hold opposing portions of the model/variables constant, we will not sustain this rejection. Appeal 2010-003505 Application 09/895,690 8 The decision of the Examiner is REVERSED. REVERSED Appeal 2010-003505 Application 09/895,690 9 hh Copy with citationCopy as parenthetical citation