Ex Parte Jacobs

Patent Trial and Appeal Board

Jul 25, 2013

10583222 (P.T.A.B. Jul. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/583,222 03/19/2007 Leslie L. Jacobs JR. 1061-013 8239
7590 07/25/2013
Michael N Haynes
1341 Huntersfield Close
Keswick, VA 22947
EXAMINER
GREGG, MARY M
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
07/25/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LESLIE L. JACOBS, JR.
____________

Appeal 2011-008794
Application 10/583,222
Technology Center 3600
____________

Before: JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-301. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to a variable stream of payments that
are to satisfy a plurality of rights to receive payments (and/or obligations to
provide payments) in exchange for transfers of interests in one or more
intellectual property assets (Spec., para. [3]).
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. A method, comprising:
electronically selecting on one or more processors one or
more segments of each of a plurality of streams of expected
payments that are to satisfy a plurality of obligations to provide
payments to a holder of one or more rights to receive such
payments in exchange for transfers of interests in one or more
intellectual property assets, said one or more segments
corresponding to a first time period having a first duration that
is less than a second duration of a second time period over
which at least one of the streams of expected payments is
expected to extend, wherein said one or more segments are
selected such that a first total amount of expected payments
associated with said one or more segments satisfies one or more
criteria; and
electronically identifying on one or more processors one
or more portions of said one or more rights for transfer to an
entity, said one or more portions corresponding to the one or
more segments that correspond to the first time period, said one
or more portions that are identified being transferred apart from

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed November 15, 2010) and Reply Brief (“Reply Br.,” filed April 14,
2011), and the Examiner’s Answer (“Ans.,” mailed February 14, 2011).
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at least one remaining portion of at least one of said one or
more rights.

REFERENCES
Wilkinson US 2002/0099637 A1 Jul. 25, 2002
Nations US 2002/0138299 A1 Sep. 26, 2002
Silman US 2005/0097022 A1 May 5, 2005
Philip US 7,181,422 B1 Feb. 20, 2007
Applicant’s Admitted Prior Art (“AAPA”).

REJECTIONS
The Examiner has rejected:
Claims 1, 6-11, 16-18, 23, 24, and 27-30 under 35 U.S.C. § 103(a) as
unpatentable over Philip and Wilkinson.
Claims 2, 12, 19, 25, and 26 under 35 U.S.C. § 103(a) as unpatentable
over Philip, Wilkinson, and Nations.
Claims 3, 5, 13, 15, 20, and 22 under 35 U.S.C. § 103(a) as
unpatentable over Philip, Wilkinson, and AAPA.
Claims 4, 14, and 21 under 35 U.S.C. § 103(a) as unpatentable over
Philip, Wilkinson, AAPA, and Silman.
We AFFIRM.
ANALYSIS
Obviousness Rejection of Independent Claim 1
We are not persuaded the Examiner erred in asserting that a
combination of Philip and Wilkinson renders obvious independent claim 12

2 Appellant presents the same assertions for independent claims 1, 11, 18,
and 25. We choose independent claim 1 as representative. 37 C.F.R. §
41.37(c)(iv).
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(App. Br. 18-21; Reply Br. 1-5). Appellant asserts that Philip does not
disclose or suggest the “selecting” step, recited in independent claim 1,
because of the following:
The portions of Philip relied upon by the Examiner
simply fails to teach the parsing of each of the streams of
expected payments into segment(s), where the segment(s)
correspond to a first time period that is shorter than a second
time period over which at least one of the streams of expected
payments is expected to extend.
(App. Br. 18; emphasis original). We disagree. Philip discloses that
securitization of financial assets is used by financial institutions to sell
interests in pools of financial assets (col. 1, ll. 6-7). Interests in selected
portions or tranches of the pool may be sold (col. 1, ll. 32-33). Tranches
represent a defined and limited aspect of the assets within the pool (col. 1, ll.
33-34). A purchaser of securities can define any rules for any characteristic
of assets that the investor desires to purchase (col. 4, ll. 36-39). The
investment bank and investor can define custom tranches of pools of assets
(col. 9, ll. 1-2). Rules are used to define which nodes define a tranche (col.
9, ll. 2-4). A field in the nodes may include a maturity of the tranche (col. 4,
Table 1). Accordingly, it was at least obvious that different tranches could
have different maturity dates, which would meet the portion of the
“selecting” step which recites “one or more segments corresponding to a
first time period having a first duration that is less than a second duration of
a second time period over which at least one of the streams of expected
payments is expected to extend.”
Appellant further asserts that the accounts receivable of Philip cannot
correspond to the recited “plurality of streams of expected payments.”
Appellant’s assertions are misplaced. Philip discloses that a financial asset
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can be any promise of a future flow of money (col. 1, ll. 8-9). As payments
are received, the cash flow and receivables management function of Philip
allocates payments and losses in accordance with an asset tree structure (col.
6, ll. 48-52). The asset tree structure defines a hierarchy of seniority of
tranches, where payments are applied in order of seniority (col. 6, ll. 52-54).
Accordingly, Philip does disclose a “plurality of streams of expected
payments,” as recited in independent claim 1.
Appellant additionally asserts the following:
Philip does not teach anything about intellectual property
assets. And although Wilkinson teaches an intellectual property
investment process generally, that by itself does not mean that
one skilled in the art would appreciate how to combine the
teachings of Philip and Wilkinson in the manner contemplated
by the Examiner.
(App. Br. 21). Appellant’s assertions are misplaced. The Examiner sets
forth a detailed analysis as to why one of ordinary skill would modify the
asset management system of Philip to handle the intellectual property assets
of Wilkinson (Ans. 5, 20-22, 35-36). As Appellant has not set forth any
specific, technical arguments as to why the Examiner’s analysis is incorrect,
Appellant has failed to meet the burden of rebutting the Examiner’s properly
established initial case of prima facie obviousness. In re Keller, 642 F.2d
413, 425 (CCPA 1981) (“[o]nce a prima facie case of obviousness [is]
established..., the burden shift[s] to appellant to rebut it”).
Appellant also asserts that the Examiner’s proffered combination of
Philip and Wilkinson does not set forth several advantages of the claimed
invention. However, the Examiner has shown how the combination of
Philip and Wilkinson discloses or suggests every limitation of independent
claim 1. Accordingly, the proffered combination also possesses every
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advantage of the claimed invention.
Obviousness Rejections of Dependent Claims 2-10, 12-17, 19-24, and
26-30
Appellant asserts that the Examiner erred in rejecting dependent
claims 2-10, 12-17, 19-24, and 26-30 for the same reasons that the Examiner
erred in rejecting the independent claims from which they depend. Our
responsive analyses concerning the independent claims are set forth above,
and need not be repeated here.
Obviousness Rejections of Dependent Claims 3, 5, 13, 15, 20, and 22
Appellant asserts that the Examiner’s use of Official Notice is
inappropriate in rejecting dependent claims 3, 5, 13, 15, 20, and 22, because
Appellant properly traversed the Examiner’s use of Official Notice, and the
Examiner has not provided the proper evidentiary support for the Official
Notice. We disagree, because Appellant has not adequately traversed by
specifically pointing out the supposed errors in the Examiner’s Official
Notice, “includ[ing] stating why the noticed fact is not considered to be
common knowledge or well-known in the art. See 37 C.F.R. § 1.111(b).”
MPEP § 2144.03(C). An adequate traverse must contain adequate
information or argument to create on its face a reasonable doubt regarding
the circumstances justifying Examiner’s notice of what is well known to one
of ordinary skill in the art. In re Boon, 439 F.2d 724, 728 (CCPA 1971). As
Appellant has not provided any such information or argument, the traversal
is inadequate, and we are thus not persuaded of Examiner error concerning
the Official Notice.
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DECISION
The decision of the Examiner to reject claims 1-30 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

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