Ex Parte Bahar

Board of Patent Appeals and Interferences

Mar 25, 2009

09822732 (B.P.A.I. Mar. 25, 2009)

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UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte REUBEN BAHAR
____________________

Appeal 2008-3020
Application 09/822,732
Technology Center 3600
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Decided:1 March 26, 2009
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN and ANTON W.
FETTING, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-3020
Application 09/822,732

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134 (2002) from a final rejection
of claims 1-6, 8-11, 13-19, 21-25, 28-38, 40-45, 47, 50 and 55-64. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

Appellant invented a method and system for auctioning bad debts
(Specification 1:8-10).
Independent claim 1 under appeal read as follows:
1. A method of auctioning bad debts to a
plurality of clients, said method comprising the
steps of:
placing select information relating to at least
one bad debt on an online auction forum, said
select information comprising at least one distinct
bad debt item to be displayed on a bidding site of
said online auction forum;
establishing at least one bidding site on said
online auction forum, said bidding site being
associated with a database, said database including
said bad debt item;
classifying said bad debt item based on a
geographic territory where said debtor resides;
displaying said bad debt item on said
bidding site in accordance with said geographic
territory.

The prior art relied upon by the Examiner in rejecting the claims on appeal
is:
Atkinson et al. US 2001/0021923 A1 Sep. 13, 2001
Morris US 2001/0034662 A1 Oct. 25, 2001
Keyes et al. US 6,456,983 B1 Sep. 24, 2002
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Brown, James J., Judgment Enforcement, 2nd Edition, Aspen
Publishes, December 1, 1995, pp. 1-19 to 1-20, 2-6 to 2-8, 4-13 (hereinafter
“Brown”).
Rivkin, DC; Donovan, DF & Legum. B., Financial & Cross-Borders
Litigation, International Financial Law Review, Euromoney Publications,
July 1994, pp. 47-51 (hereinafter “Rivkin”).
The Examiner rejected claims 1-5, 9-10, 16-18, 21, 23, 28-38, 40-45,
47, 50 and 55-64 under 35 U.S.C. § 103(a) as being unpatentable over
Morris in view of Brown; claims 6, 11 and 19 under 35 U.S.C. § 103(a) as
being unpatentable over Morris in view of Brown and Rivkin; claims 8, 13-
15 and 22 under 35 U.S.C. § 103(a) as being unpatentable over Morris in
view of Brown and Keyes; and claims 24 and 25 under 35 U.S.C. § 103(a)
as being unpatentable over Morris in view of Brown and Atkinson.

SUMMARY OF THE DECISION
We affirm the rejections of claims 1-6, 8-11, 13-19, 21-25, 28-38, 40-
45, 47, 50 and 55-64.

ISSUES
Did the Appellant show the Examiner erred in asserting that the sale
of debt accounts in Morris can be properly combined with certain debt
judgment enforcement provisions of Brown to render obvious associating a
bad debt item with a geographic territory where the debtor resides as recited
in independent claims 1, 31-33, 38, 45, 47 and 55?
Did the Appellant show the Examiner erred in asserting that a
combination of Morris and Brown renders obvious a lot package with at
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least two bad debts having individually distinct debtors that reside within the
same geographic territory as recited in claims 3, 34, 38, 47, 55, 62, 63 and
64?
Did the Appellant show the Examiner erred in asserting that Rivkin
discloses that information concerning the bad debt item includes the
geographic territories in which jurisdiction is present over the debtor as
recited in claims 6, 11 and 19?
Did the Appellant show the Examiner erred in asserting that Atkinson
discloses an online auction utilizing consecutive and concurrent bidding
phase intervals as recited in claim 24?
Did the Appellant show the Examiner erred in rejecting claims 8, 13-
15 and 22?

FINDINGS OF FACT
Specification
Appellant invented a method and system for auctioning bad debts
(Specification 1:8-10).

Morris
Morris discloses a method and system for facilitating a sale of debt
accounts between a seller and one or more potential buyers ([0010]).
Some of the steps in the system and method include (a) creating a
computer readable database comprising data pertaining to a plurality of debt
accounts, each account comprising a plurality of data fields, and (b)
grouping the accounts into at least one lot based upon at least one correlation
among the data in the data fields ([0011], [0031]).
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Some of the data fields include geographic origin of the accounts
(e.g., country, region, state, city, zip code, etc.) and domicile of the seller
([0003], [0036], [0059]).

Brown
Brown discloses that a provision for transferring the action or
proceeding to the district of the debtor’s residence safeguards debtor
interests (p. 1-19).
Brown also discloses investigating a debtor’s files for information
including location and sufficiency of debtor’s assets and property interests,
for example, by visiting the debtor’s headquarters or residence (pp. 2-6
through 2-7).
Information concerning the individual debtor’s name, address, and
Social Security number may serve to help counsel locate a debtor (p. 2-7).
The judgment creditor may move that the court order the judgment
debtor to appear before it or a master in the debtor’s county of residence to
be examined concerning the property (p. 4-13).

Rivkin
A court may exercise jurisdiction over a defendant only if there are
meaningful minimum contacts between the defendant and the forum. If a
defendant does substantial and continuous business in a US state, the courts
of that state have jurisdiction over the defendant with respect to any and all
claims (paragraph beginning with “Under the US Constitution”).

Atkinson
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Atkinson discloses a method and system of conducting an auction in
at least two rounds. The system includes a sponsor processor, a first bidder
processor communicating with the sponsor processor, and a second bidder
processor communicating with the sponsor processor. In the system, the
sponsor processor contains instructions which, when executed by the
processor, cause the processor to conduct the first auction round, apply a
rule to an occurrence in the first auction round, and conduct a second auction
round in accordance with the applied rule (Abstract; Fig. 1A).
Various goods or services may simultaneously be placed for auction.
In certain situations, however, there is a need to provide two or more
auctions falling chronologically one after another. Each such action falling
in chronological order is referred to herein as an “auction round” ([0012]).
A sponsor 10 may wish to conduct an auction in several rounds for a
variety of reasons including, for example, the need to purchase more goods
than may be supplied by the bidders 30 or a desire to learn from an early
auction round and make alterations in subsequent rounds ([0067]).

PRINCIPLES OF LAW
Claim Construction
During examination of a patent application, a pending claim is given
the broadest reasonable construction consistent with the specification and
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art. In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004).
In examining the specification for proper context, the court will not at
any time import limitations from the specification into the claims.
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CollegeNet, Inc. v. ApplyYourself, Inc., 418 F.3d 1225, 1231 (Fed. Cir.
2005).

Obviousness
One cannot show non-obviousness by attacking references
individually where the rejections are based on combinations of references.
In re Keller, 642 F.2d 413, 425 (CCPA 1981).
The motivation need not be found in the references sought to be
combined, but may be found in any number of sources, including common
knowledge, the prior art as a whole, or the nature of the problem itself. In re
Dembiczak, 175 F.3d 994, 999 (Fed. Cir. 1999).
Once a prima facie case of obviousness is established, the burden
shifts to Appellant to rebut it. In re Keller, 642 F.2d at 425.

References
A reference capable of more than one interpretation is still a valid
reference. The mere existence of a contrary interpretation of the reference
does not relieve the courts of their duty of determining the proper
construction nor free the Patent Office from its obligation to require
applicant to patentably distinguish thereover. In re Chmiel and O’Leary,
262 F.2d 81, 83-84 (CCPA 1958).

ANALYSIS
Debtor’s Residence
The Appellant asserts that neither Morris nor Brown discloses
classifying a bad debt item based on a geographic territory where a debtor
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resides, as recited in independent claims 1, 31-33, 38, 45, 47 and 55, because
Morris does not disclose how bad debt items are classified (Appeal Brief
22). We disagree with the Appellant.
Morris discloses grouping multiple accounts into at least one lot based
upon at least one correlation among the data in the data fields. Under a
broadest reasonable interpretation, the correlating of Morris corresponds to
the classifying recited in independent claims 1, 31-33, 38, 45, 47 and 55.
See In re Am. Acad. Of Sci. Tech Ctr., 367 F.3d at 1364.
The Appellant also asserts that (1) Brown does not disclose that a
debtor’s residence is a key component of the collection and judgment
enforcement process; (2) Brown only discloses a debtor’s residence in
connection with issues unrelated to classification of auctioned debts; and (3)
if anything, Brown discloses classifying debt based on the asset’s location,
and not the debtor’s residence (Appeal Brief 23-25). We again disagree with
the Appellant.
Initially, we note that one cannot show non-obviousness by attacking
references individually where the rejections are based on combinations of
references. In re Keller, 642 F.2d at 425. Brown is merely cited for the
proposition that a debtor’s residence is considered in collection and
judgment enforcement processes. Morris discloses correlating accounts into
lots based on data in data fields. The Examiner has combined Morris and
Brown by placing the debtor’s residence of Brown as one possible point of
the data in Morris’ data field which could be used to correlate multiple
accounts into at least one lot (Examiner’s Answer 3-6, 31-33). Accordingly,
while Brown by itself does not disclose classifying bad debt based on a
debtor’s residence, the combination of Morris and Brown does render
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predictable the aforementioned aspect of independent claims 1, 31-33, 38,
45, 47 and 55.
The Appellant further asserts that neither Brown nor Morris explicitly
sets forth the motivation recited on pages 32-33 of the Examiner’s Answer
(Appeal Brief 25-26; Reply Brief 2). We once more disagree with the
Appellant.
The motivation need not be found in the references sought to be
combined, but may be found in any number of sources, including common
knowledge, the prior art as a whole, or the nature of the problem itself. In re
Dembiczak, 175 F.3d at 999. In this case, the Examiner has chosen to set
forth two problems in the field of endeavor that are solved by correlating
accounts based on debtor’s residence. Accordingly, in the absence of any
specific arguments as to why the problems are improper, why the
combination doesn’t solve the problem, or any other specifically articulated
reason why Morris and Brown cannot be combined, the Appellant has not
met the burden of showing that the combination of Morris and Brown set
forth by the Examiner is improper. In re Keller, 642 F.2d at 425.

Lot Packages With At Least Two Bad Debts
The Appellant appears to assert that the cited references cannot
disclose a lot package with at least two bad debts having individually
distinct debtors that reside within the same geographic territory, as recited in
claims 3, 34, 38, 47, 55, 62, 63 and 64, because the cited references do not
recite the same advantages set forth in the specification (Appeal Brief 28-29;
Reply Brief 3). However, none of these advantages are set forth in the
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claims, and we “will not at any time import limitations from the
specification into the claims.” See CollegeNet, Inc., 418 F.3d at 1231.

Personal Jurisdiction
The Appellant asserts that Rivkin does not disclose geographic
territories in which courts have personal jurisdiction over the debtor, as set
forth in claims 6, 11, and 19, because Rivkin refers to a jurisdiction in which
the judgment debtor has "real property, equipment, fixtures and personal
property", rather than a geographical territory in which the debtor itself is
subject to personal jurisdiction (Appeal Brief 29-31). We disagree with the
Appellant.
The portion of Rivkin which discloses “real property, equipment,
fixtures and personal property” is only related to jurisdiction during a sale
and seizure, and not jurisdiction generally. Rivkin discloses that a state
court has personal jurisdiction over a defendant if the defendant has
meaningful minimum contacts with the state. Thus, the jurisdiction is
personal to the defendant, and not just to the defendant’s assets.
The Appellant also asserts that Rivkin is addressing the location of
assets owned by a debtor against whom a judgment has already been
obtained, rather than the residence of a debtor against whom a judgment has
yet to be obtained (Appeal Brief 30). We again disagree with the Appellant.
The claims do not make a distinction between personal jurisdiction
that is dependent on whether or not a judgment has already been obtained
against a defendant. See CollegeNet, Inc., 418 F.3d at 1231. Moreover,
personal jurisdiction is necessary prior to obtaining a judgment against a
defendant, and Rivkin discloses aspects related to obtaining personal
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jurisdiction. Accordingly contrary to Appellant’s assertion, Rivkin does
disclose obtaining personal jurisdiction over a defendant against whom a
judgment has yet to be obtained.

Consecutive and Concurrent Bidding Phase Intervals
The Appellant asserts that Atkinson does not disclose concurrent
bidding phase intervals, as recited in claim 24, because Atkinson discloses
that various goods and services are simultaneously being placed for auction
as a single auction item (Appeal Brief 31-32). However, an equally
reasonable interpretation of “various goods or services may simultaneously
be placed for auction” is that each of the various goods or services has its
own separate auction that is run simultaneously or concurrently with the
other auctions. As both interpretations of “simultaneous” in Atkinson are
reasonable, and one of the interpretations corresponds to the claimed
concurrent bidding phase intervals, the rejection is proper. See In re Chmiel
and O’Leary, 262 F.2d at 83-84.

Other Claims
The Appellant asserts that the Examiner erred in rejecting claims 8,
13-15 and 22 because they depend from allowable claim 1 (Appeal Brief
31). However, because we sustain the rejection of claim 1, from which these
claims depend, we do not reverse the rejection of these claims.

CONCLUSIONS OF LAW
The Appellant has failed to show that the Examiner erred in rejecting
claims 1-6, 8-11, 13-19, 21-25, 28-38, 40-45, 47, 50 and 55-64.
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The Appellant did not show that the Examiner erred in asserting that
the sale of debt accounts in Morris can be properly combined with certain
debt judgment enforcement provisions of Brown to render obvious
associating a bad debt item with a geographic territory where the debtor
resides as recited in independent claims 1, 31-33, 38, 45, 47 and 55.
The Appellant did not show that the Examiner erred in asserting that a
combination of Morris and Brown renders obvious a lot package with at
least two bad debts having individually distinct debtors that reside within the
same geographic territory as recited in claims 3, 34, 38, 47, 55, 62, 63 and
64.
The Appellant did not show that the Examiner erred in asserting that
Rivkin discloses that information concerning the bad debt item includes the
geographic territories in which jurisdiction is present over the debtor as
recited in claims 6, 11 and 19.
The Appellant did not show that the Examiner erred in asserting that
Atkinson an online auction utilizing consecutive and concurrent bidding
phase intervals as recited in claim 24.
The Appellant did not show that the Examiner erred in rejecting
claims 8, 13-15 and 22.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).

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AFFIRMED

LV:

CAHILL VON HELLENS & GLAZER PLC
Attn Marvin A Glazer
155 Park One
2141 E Highland Avenue
Phoenix, AZ 85016
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