Ex Parte Nelson

Board of Patent Appeals and Interferences

Jul 15, 2010

10830837 (B.P.A.I. Jul. 15, 2010)

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.
10/830,837 04/22/2004 Cory Nelson 20832.00542 9329
23619 7590 07/15/2010
SQUIRE SANDERS & DEMPSEY LLP
1 East Washington Street
SUITE 2700
PHOENIX, AZ 85004
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
07/15/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CORY NELSON
____________

Appeal 2009-011991
Application 10/830,837
Technology Center 3600
____________

Decided: July 15, 2010
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and ANTON W.
FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-011991
Application 10/830,837

2
STATEMENT OF THE CASE
Cory Nelson (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1, 2, and 5-15. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.2

THE INVENTION
The invention is a system and method for teaching principles of
finance, investing, and accounting. Specification [0002].
Claim 2, reproduced below, is illustrative of the subject matter on
appeal.
2. A method, performed by a computer having a
user interface, for teaching principles of finance,
investing and accounting, the method comprising:
presenting an opportunity to participate in a
financial transaction, the opportunity comprising a
plurality of values;
providing a financial statement that
describes a financial position, the financial
statement comprising a plurality of portions, and
the financial position comprising total periodic
income, total periodic expenses, and net periodic
cash flow;

2 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Dec. 15, 2008) and Reply Brief (“Reply Br.,” filed May 26,
2009), and the Examiner’s Answer (“Answer,” mailed Mar. 24, 2009).
Appeal 2009-011991
Application 10/830,837
3
receiving inputs from a user that specify a
plurality of associations, wherein each association
associates a respective value of the opportunity
with a respective portion of the financial
statement;
updating the presentation of the financial
statement in accordance with the plurality of
associations;
receiving a participation input from the user
indicating a desire to participate in the transaction;
and
permitting participation in the transaction in
accordance with an acceptance of the plurality of
associations in response to the participation input,
wherein the acceptance determines if the plurality
of associations are consistent with predetermined
accounting principles, and wherein the acceptance
is performed with reference to a financial strategy
applicable to personal finance.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Goleh
Kiyosaki
Ferguson
Juranovic
Bertrand
US 5,372,507
US 5,826,878
US 6,336,094 B1
US 6,375,466 B1
US 6,745,170 B2
Dec. 13, 1994
Oct. 27, 1998
Jan. 1, 2002
Apr. 23, 2002
Jun. 1, 2004
The following rejections are before us for review:
1. Claims 1, 2, 5, and 10-15 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Juranovic, Goleh, and Kiyosaki.
2. Claims 6 and 7 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Juranovic, Goleh, Kiyosaki, and Bertrand.
Appeal 2009-011991
Application 10/830,837
4
3. Claims 8 and 9 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Juranovic, Goleh, Kiyosaki, and Ferguson.

ISSUES
The issues are whether the Examiner has established a prima facie
showing of obviousness in rejecting claim 2 and whether Juranovic teaches
away from the Examiner’s combination with Kiyosaki in the rejection of
claim 2. The rejections of all of the claims under 35 U.S.C. § 103(a) turns
on these issues.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. In rejecting claim 2, the Examiner made factual findings as to the
scope and content of the prior art. See Answer 4-6.
2. In rejecting claim 2, the Examiner made factual findings as to the
differences between the prior art and the claimed subject matter. See
Answer 6.
3. In rejecting claim 2, the Examiner articulated rationale to support the
legal conclusion of obviousness. See Answer 6.
4. Juranovic states:
It will also been seen that after a number of groups
of participants have learned the present economic
and business systems according to the present
teaching method, that they may compete against
one another in a simulation of two or more
Appeal 2009-011991
Application 10/830,837
5
corporate entities if desired. If several
corporations are simulated simultaneously, the
winner may be determined by the simulated
corporation which earns the highest overall score
of performance based upon the rules of business
behavior previously agreed upon. If a single
corporation is simulated, the contest develops
among its stakeholders. The highest score will
correspond jointly to the CEO and the stakeholder
who had excelled in his or her behavior to the
extent of enabling the simulated corporation to
achieve its principle short term and long term
objectives.
Col. 18, ll. 25-38.

ANALYSIS
The Appellant argued claims 1, 2, and 5-15 as a group (App. Br. 3-9).
We select claim 2 as the representative claim for this group, and the
remaining claims 1 and 5-15 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii) (2009).
The Appellant makes two arguments to traverse the rejection of claim
2 under 35 U.S.C. § 103(a) as being unpatentable over Juranovic, Goleh, and
Kiyosaki. The Appellant argues that 1) the Examiner has not established a
prima facie showing of obviousness and 2) that Juranovic teaches away from
the Examiner’s combination with Kiyosaki.
First, the Appellant asserts that the Examiner has not established a
prima facie showing of obviousness because the Examiner does not
articulate any factual findings as to: 1) the scope and content of the prior art,
2) the differences between the prior art, and 3) the claimed subject matter or
the level of ordinary skill in the art as required by a Graham analysis. App.
Br. 6-8 and Reply Br. 4-5. Further, the Appellant asserts that the Examiner
Appeal 2009-011991
Application 10/830,837
6
has not articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness. App. Br. 6-7 and Reply Br. 4-5.
We disagree with the Appellant’s assertions and find that the
Examiner has established a prima face showing of obviousness. Graham
sets out that the question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, and (3) the level of skill in the art. Graham v. John Deere Co., 383
U.S. 1, 17-18 (1966).
Contrary to the Appellant’s assertion, the Examiner has made the
factual determinations of the scope and content of the prior art and of the
differences between the claimed subject matter and the prior art. See FF 1-2.
For example, for the step of permitting participation in the transaction in
accordance with an acceptance of the plurality of association recited in claim
2, the Examiner found that column 7, line 18 to column 9, line 67; Figure 9b,
element 208; column 16, lines 36-53 of Juranovic taught most of this step
(Answer 5) but that “Juranovic does not specifically disclose acceptance of
associates consistent with predetermined accounting principles and
acceptance with reference to a personal finance strategy” (Answer 6). This
is an articulated finding of the scope and content of Juranovic and an
articulated finding of the differences between Juranovic and the claimed
subject matter
As to the determination of the level of skill in the art, we note that the
Appellant does not challenge whether or not the prior art reflects the level
but merely states that the Final Office Action does not articulate any finding
were made as to the level of ordinary skill in the art. App. Br. 7. “[T]he
Appeal 2009-011991
Application 10/830,837
7
absence of specific findings on the level of skill in the art does not give rise
to reversible error ‘where the prior art itself reflects an appropriate level and
a need for testimony is not shown.’” Okajima v. Bourdeau, 261 F.3d. 1350,
1355 (Fed. Cir. 2001) (Quoting Litton Indus. Prods., Inc. v. Solid State Sys.
Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)). See also Chore-Time Equip.,
Inc. v. Cumberland, 7 13 F.2d 774, 779 n.2, (Fed. Cir. 1983) (affirming
court decision of invalidity).
Finally, as to the Appellant’s assertion that the Examiner has not
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness, we find that the Examiner has articulated a
rationale to support the legal conclusion of obviousness. FF 3. For
example, as the Appellant points out (App. Br. 8), the Examiner states that
their proposed combination of Juranovic and Kiyosaki would have been
obvious “because this would provide insight to participants as to how to
operate their personal finances.” Answer 6.
Therefore, we find that the Examiner has established a prima facie
showing of obviousness. We note that the Appellant does not rebut the
Examiner’s findings or rationale, but merely argues that the Examiner has
not articulated the required findings or rationale.
Second, the Appellant argues that Juranovic teaches away from the
Examiner’s proposed combination with Kiyosaki because Juranovic
explicitly teaches a non-competitive method of teaching economics and
Kiyosaki teaches a competitive board game that keeps track of currency
accrued by the participants. App. Br. 8-12 and Reply Br. 5-7. The
Appellant states, “Juranovic is explicitly non-competitive and participants do
not accrue any simulated currency, nor is any score maintained for any
Appeal 2009-011991
Application 10/830,837
8
participant.” App. Br. 9. (emphasis original). The Appellant also provides
several other citations where Juranovic describes its teaching method as
being non-competitive. See App. Br. 10-11 and Reply Br. 6-7.
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
will teach away if it suggests that the line of development
flowing from the reference's disclosure is unlikely to be
productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
We agree with the Appellant that Juranovic does describe its teaching
method as being non-competitive in the cited passages (see Answer 9-11)
and does describe that a difference between the inventions in Juranovic and
Kiyosaki is that the teaching system of Juranovic is not competitive (see
Answer 11) . However, we find that Juranovic also explicitly states that its
teaching method may be made competitive after a group of participants have
learned the system. FF 4. Juranovic states:
It will also been seen that after a number of
groups of participants have learned the present
economic and business systems according to the
present teaching method, that they may compete
against one another in a simulation of two or more
corporate entities if desired. If several
corporations are simulated simultaneously, the
winner may be determined by the simulated
corporation which earns the highest overall score
of performance based upon the rules of business
behavior previously agreed upon.
Col. 18, ll. 25-38 (emphasis added).
Appeal 2009-011991
Application 10/830,837
9
As can been seen from the passage above, Juranovic explicitly teaches
that the system can be made competitive once the participants have learned
the system and that scoring can be included to determine a winner. FF 4.
Accordingly, giving consideration to the entirety of Juranovic, we find that
one of ordinary skill in the art would not have been discouraged from
making the proposed combination, since Juranovic explicitly describes that
the participants may compete against one another after they have learned the
system (Id.).
Accordingly, we find that the Appellant has not overcome the
rejections of claims 1, 2, and 5-15 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 1, 2, and 5-15 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)(1)(iv) (2007).

AFFIRMED

mev

SQUIRE SANDERS & DEMPSEY LLP
1 East Washington Street
SUITE 2700
PHOENIX AZ 85004