Ex Parte Jacobs

Patent Trial and Appeal Board

Aug 14, 2013

10515866 (P.T.A.B. Aug. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LESLIE L. JACOBS, JR.
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Appeal 2011-012320
Application 10/515,866
Technology Center 3600
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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 1-136 and 138-
1941. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to methods, computer systems, and
computer readable media for facilitating transactions involving contractual
rights to receive payments resulting from the transfer(s) of rights in
intellectual property assets (Spec., para. [17]).
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. A method of facilitating transactions involving one
or more contractual rights to receive payments resulting from
one or more transfers of rights in one or more intellectual
property assets, said method comprising acts comprising at least
one computer-implemented act, the acts comprising:
receiving a request to assist with a transaction involving a
first intellectual property asset from a first entity, said
transaction comprising licensing of said first intellectual
property asset;
assisting with the licensing of said first intellectual
property asset to a second entity, said licensing resulting in said
first entity securing a first contractual right to receive at least a
first royalty payment from said second entity; and
providing a third entity with access via a network to a
first electronic list identifying a first group of contractual rights
to receive royalty payments comprising said first contractual
right, wherein a transferable interest in each contractual right of
said first group of contractual rights is being made available for
transfer to a receiving entity.

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed April 11, 2011) and Reply Brief (“Reply Br.,” filed July 19,
2011), and the Examiner’s Answer (“Ans.,” mailed May 19, 2011).
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REFERENCES
Kossovsky US 2002/0002524 A1 Jan. 3, 2002
Elliott US 2003/0046105 A1 Mar. 6, 2003
Pullman US 2003/0225653 A1 Dec. 4, 2003
D’Loren US 2005/0021434 A1 Jan. 27, 2005
Graham US 2008/0215474 A1 Sep. 4, 2008

REJECTIONS
The Examiner has rejected:
claims 1, 2, 4-6, 10-12, 14-36, 38-40, 44-46, 48-70, 72-74, 79, 81-94,
96, 97, 99-103, 105-107, 109, 110, 112-115, 117-132, 134, 135, 138, 140-
142, 144-157, 159-162, 164-167, 169-182, 184-186, 188, 189, and 192-194
under 35 U.S.C. § 102(b) as anticipated by Kossovsky;
claims 3, 37, 71, 104, 133, 163, and 187 under 35 U.S.C. § 103(a) as
unpatentable over Kossovsky and Pullman;
claims 7-9, 41-43, 75-78, 190, and 191 under 35 U.S.C. § 103(a) as
unpatentable over Kossovsky and D’Loren;
claims 13, 47, 80, 95, 98, 116, 143, and 168 under 35 U.S.C. § 102(b)
as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Kossovsky;
claims 108, 136, and 139 under 35 U.S.C. § 103(a) as unpatentable
over Kossovsky and Graham; and
claims 111, 158, and 183 under 35 U.S.C. § 103(a) as unpatentable
over Kossovsky and Elliott.
We AFFIRM.
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ANALYSIS
Anticipation Rejection of Independent Claim 1
We are not persuaded the Examiner erred in asserting that Kossovsky
anticipates independent claim 12 (App. Br. 45-47; Reply Br. 1-2).
Appellant asserts that none of paragraphs [0051]-[0053], [0099], and [0121]
of Kossovsky disclose “providing a third entity with access via a network to
a first electronic list identifying a first group of contractual rights to receive
royalty payments comprising said first contractual right, wherein a
transferable interest in each contractual right of said first group of
contractual rights is being made available for transfer to a receiving entity,”
as recited in independent claim 1. We disagree.
For paragraphs [0051]-[0053] of Kossovsky, Appellant asserts the
following: “Paragraphs 51-53 of Kossovsky disclose identifying a patent for
sale but not any contractual right to receive any kind of payments related to,
for example, the licensing of the patent” (App. Br. 45). However, paragraph
[0099] of Kossovsky discloses the following: “the TRRU valuation model
can be used to securitize future revenue streams of an IP asset allowing the
creation of a financial instrument in future revenue that can be bought and
sold analogously to a stock.”
For paragraph [0121] of Kossovsky, Appellant asserts the following:
Kossovsky discloses that “IP holders may bundle a group of
technologies, ‘securitize’ them into units, and list(sic) these
units, or options to own the units.” See pg. 121 of Kossovsky.
Once the bundle of technologies are securitized into a unit, such

2 Appellant presents the same assertions for independent claims 1, 35, 69,
102, 130, 160, and 185. We choose independent claim 1 as representative.
37 C.F.R. § 41.37(c)(iv).
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as a bond in the case of the Bowie Bonds identified in paragraph
121, Kossovsky does not disclose or teach that a transferable
interest in each of the contractual rights to receive payments
(e.g., royalty payments) in exchange for the transfer of right(s)
associated with intellectual property asset(s) that underlie the
bond is being made available for transfer to a receiving entity.
The bond acquirer cannot pick or choose the individual
contractual rights underlying the bond because a transferable
interest in each of those contractual rights is not being made
available to the acquirer along with the bond itself, and the
portions of Kossovsky relied upon by the Examiner do not
disclose or teach any other arrangement respecting the
acquisition of such contractual rights.
(App. Br. 45-46). Appellant’s assertions are misplaced because they are not
commensurate with the scope of independent claim 1. Independent claim 1
recites “a first contractual right to receive at least a first royalty payment.”
Independent claim 1 further recites that the first contractual right is broken
up into a first group of contractual rights. From there, independent claim 1
recites that “a transferable interest in each contractual right of said first
group of contractual rights is being made available for transfer.” Thus,
Appellant asserts that each interest in the first group of contractual rights is
separately transferable from the other interests. However, that is not the
case. Under a broadest reasonable construction of “a first electronic list . . .
wherein a transferable interest in each contractual right of said first group of
contractual rights is being made available for transfer,” the transfer of a
single contractual right containing a plurality of transferable interests would
meet the aforementioned limitation of independent claim 1. In other words,
each interest in the first group of contractual rights need not be separately
transferable from the other interests, in order to meet the “providing” step of
independent claim 1.
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To that end, paragraph [0121] of Kossovsky discloses bundling a
group of technologies, and then securitizing them into units. The units are
then listed on the Securitized Asset cash flows exchange (para. [0121]). The
seller stores data describing the security unit listed on the exchange, for
example, pertinent patents, copyrights, and trademarks (para. [0044]). A
potential buyer can then retrieve the information stored by the seller in the
exchange database (para. [0051]). The security unit corresponds to the
recited contractual right, and the listing of the patents, copyrights, and
trademarks underlying the security unit corresponds to the recited first
electronic list of the first group of contractual rights. Each of the patents,
copyrights, and trademarks is available for transfer to the buyer, albeit only
as a part of the overall security unit. Furthermore, independent claim 1
recites that “a transferable interest . . . is being made available for transfer.”
In other words, no actual transfer is required to meet the claim. Thus, by
listing the security unit, the listing of the patents, copyrights, and trademarks
underlying the security unit are available for transfer, together or separately,
even if no separate transfer is explicitly disclosed in Kossovsky.
Appellant further asserts the following:
The Examiner suggests that Kossovsky teaches bundling an
individual asset (or contractual right), when the IP asset being
referred to in paragraph 99 is not a contractual right to receive
future payments as suggested by the Examiner. Rather,
Kossovsky clearly refers to the actual IP asset that is “part of a
sale or licensing transaction, as described above.” See
Paragraph 99 of Kossovsky. In particular, Kossovsky teaches
that “an IP asset offered for sale or license can consist of a
single patent or multiple patents pertaining to the same
technology. Additionally an IP asset can include pertinent
trademarks or copyrights.” See paragraph 44 of Kossovsky.
As such, Kossovsky clearly draws a distinction between the
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right(s) to receive future revenue streams and the underlying
intellectual property asset(s) that gives rise to them.
(App. Br. 46). We disagree. Paragraph [0099] of Kossovsky explicitly
discloses the following: “the TRRU valuation model can be used to
securitize future revenue streams of an IP asset allowing the creation of a
financial instrument in future revenue that can be bought and sold
analogously to a stock.” The securitized future revenue stream corresponds
to the recited “contractual right to receive at least a first royalty payment.”
Appellant’s citation from paragraph [0099] of Kossovsky that the actual IP
asset is “part of a sale or licensing transaction, as described above” is
misleading, as the entire sentence reads as follows:
In addition to use in valuing an IP asset as part of a sale or
licensing transaction, as described above, the TRRU valuation
tool has multiple applications to other types of financial
transactions,
(para. [0099]; emphasis added), of which one is the securitization of
future revenue streams. Accordingly, Kossovsky contemplates all of
IP asset sales, licenses, and securitization of future revenue streams.
Anticipation Rejection of Dependent Claims 2, 4-6, 10-12, 14-34, 36,
38-40, 44-46, 48-68, 70, 72-74, 79, 81-94, 96, 97, 99-101, 103, 105-107,
109, 110, 112-115, 117-129, 131, 132, 134, 135, 138, 140-142, 144-157,
159, 161, 162, 164-167, 169-182, 184, 186, 188, 189, and 192-194
Obviousness Rejections of Dependent Claims 3, 7-9, 13, 37, 41-43,
47, 71, 75-78, 80, 95, 98, 104, 108, 111, 116, 133, 136, 139, 143, 158, 163,
168, 183, 187, 190 and 191
Appellant asserts that the Examiner erred in rejecting dependent
claims 2-34, 36-68, 70-101, 103-129, 131-136, 138-159, 161-184, and 186-
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194 for the same reasons that the Examiner erred in rejecting the
independent claims from which they depend. Our responsive analysis
concerning the independent claims are set forth above, and need not be
repeated here.
DECISION
The decision of the Examiner to reject claims 1-136 and 138-194 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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