Appeal No. 2004-0511
Application 09/375,817
730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert.
dismissed, 468 U.S. 1228 (1984); W.L. Gore and Associates, Inc.
v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984).
With respect to independent claim 1, the examiner has
indicated how he reads the claimed invention on the disclosure of
Wallman ’098 [answer, pages 3-4]. Appellants argue that
Wallman ’098 pertains to an investor’s portfolio and has nothing
to do with a “fund” or a “synthetic investment fund.” Appellants
argue that what constitutes a “fund” is well known in securities
law and finance, and that a personal investor’s portfolio, such
as taught by Wallman ’098, cannot constitute such a fund.
Appellants note that merely holding mutual fund shares in the
Wallman ’098 investment portfolio is not the same as forming a
synthetic investment fund as claimed. Since appellants argue
that Wallman ’098 fails to disclose a synthetic investment fund,
they argue that Wallman ’098 cannot disclose any of the claimed
steps which operate on a synthetic investment fund. Appellants
also argue that there is no disclosure of the mathematical
relationship in Wallman ’098 nor of the balancing of assets based
on the relationship [brief, pages 21-32]. The examiner responds
-4-
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007