Appeal No. 2005-1674
Application 09/613,153
combination of steps including "selecting criteria for screening the
selection of stock, wherein the selected criteria consists of a buyback ratio
and at least one of price/sales ratio and a price/earnings ratio for each
stock," and "identifying the stocks from the specified selection having
buyback ratios, wherein a buyback ratio corresponds to a percentage of
issued stock repurchased from the public during a specified period and
resulting in a decrease of shares outstanding."
The Examiner attempts to defeat the patentability of the claimed
invention by relying on Kiron et al., but Kiron et al. does not disclose or
suggest the combination of steps recited in claim 1, for example. Instead,
this reference discloses a system that seeks to establish a price for shares
in an open-ended mutual fund to enable continuous trading. [Col. 1, ll.
11-16.] These open-ended mutual funds do not have stocks with buyback
ratios because, as the name implies, the shares of these funds remain
outstanding and have yet to be repurchased. Kiron et al. does not disclose
that their invention is intended to reap the benefits associated with
buybacks, as described by the claimed invention. Instead, the newly
created fund establishes a tradeable entity that represents open ended
shares. This allows fund managers to buy and sell the shares at an agreed
upon price other than that required by the NAV. [See Col. 2. l[]. 64 - col.
3, l[]. 9.] Applicant asserts that neither the creation of this entity nor any
other teaching or suggestion garnered from Kiron et al. would motivate
one to create a portfolio of stocks having a buyback ratio using the
combination of steps recited in claim 1.
Applicant also respectfully challenges the Examiner's assertion of
Official Notice, and request that the Examiner cite a prior art reference, as
required by MPEP 2144.04 in support of the Examiner's position. [See
MPEP 2144.04.] Further, Applicant asserts that even if the Examiner can
provide a reference that discloses calculating buyback ratios was known
prior to the claimed invention, he has made no showing that the
combination of this knowledge with Kiron et al. would lead a person of
ordinary skill in the art to arrive at the combination of steps recited in
claim 1. Applicant asserts that the only motivation for making this leap is
his own application, amounting to an exercise in impermissible hindsight.
The examiner is therefore incorrect to treat appellant's observation (in the first paragraph quoted
above) that "claim 1, for example, recites a combination of steps including "selecting criteria for
screening the selection of stock, wherein the selected criteria consists of a buyback ratio and at
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