Appeal No. 2005-1674
Application 09/613,153
price/earnings ratio. Id. at col. 4, ll. 18-27. The only mention of buying back shares in Kiron is
in the "Background of the Invention" (cols. 1-2), which explains that open end mutual funds
cannot sell or buy back their shares at a price other than the N.A.V. (plus sales load, if any). See,
e.g., col. 2, ll. 31-32.
During prosecution of the patent, the examiner explained the § 103(a) rejection of the
independent claims over Kiron as follows:
3. As per claims 1, 10 and 19 Kiron et al. discloses selection of
stock from a database of stock information (see fig. 1A); selecting criteria
consists of buyback (see col. 1 lines 13-15 for open end mutual funds) and
at least one of price/sales ratio and a price/earnings ratio for each stock
(see col. 4 lines 18-35 and 41-57). Kiron does not specifically disclose
calculating [a] buyback ratio. Official notice is taken that [sic, of]
calculating [a buyback] ratio or percentage from available information.
Therefore, it would have been obvious to one having ordinary skill in the
art at the time the invention was made to calculate the percentage of
repurchased or outstanding stock for statistical analysis. Kiron discloses
ranking of stocks.
Application 09/030,854, April 29, 1999, Office action at 2. In response, appellant argued the
patentability of the claims over Kiron based on the buyback ratio limitation, not on the "at least
one of [a] price/sales ratio or a price/earnings ratio" limitation, which appellant did not deny is
satisfied by Kiron:
The Examiner[-]selected reference does not disclose or suggest the
combination of steps recited in claim 1, for example. Systems and
methods of the claimed invention allow an investor to establish a
particular type of portfolio that yields the benefits associated with a
specific category of stocks. The category (i.e., a stock having a buyback
ratio) is unique in that the company has begun to buyback [sic] stocks at a
particular rate. The Applicant has determined that if this repurchase rate is
higher than in other stocks its rate of performance is likely to be greater
over a given time period. To this end, claim 1, for example, recites a
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