Appeal No. 2004-0511
Application 09/375,817
that as best understood by him, a mutual fund represents a
portfolio of securities which is taught by Wallman ’098. The
examiner also responds that a mathematical relationship can be
any relationship between the amount entered in the portfolio for
the two kinds of shares [answer, pages 5-10]. Appellants respond
by repeating their argument that Wallman ’098 does not pertain to
a synthetic investment fund [reply brief].
We will not sustain the examiner’s rejection of
independent claim 1 for essentially the reasons argued by
appellants in the briefs. The rejection of these claims can be
decided on the very narrow question of whether the management of
an individual investor’s portfolio as taught by Wallman ’098 can
meet the claim recitation of forming a synthetic investment fund.
We agree with appellants that a synthetic investment fund must be
interpreted in the manner understood by those skilled in the art.
The artisans would understand that such a fund is not met by an
individual investor’s portfolio. We agree with appellants that
the term synthetic investment fund only relates to a securities
fund meeting the various regulations required of publicly traded
securities. Therefore, the examiner’s finding that Wallman ’098
teaches a synthetic investment fund is incorrect. We also agree
with appellants that Wallman ’098 does not teach the balancing so
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