10372561 (B.P.A.I. Jun. 5, 2012)

Ex Parte Paglin

Board of Patent Appeals and InterferencesJun 5, 2012

10372561 (B.P.A.I. Jun. 5, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/372,561 02/24/2003 Renan C. Paglin 2477 7590 06/06/2012 Robert C Faber Ostrolenk Faber Gerb & Soffen 1180 Avenue of the Americas New York, NY 10036-8403 EXAMINER LEMIEUX, JESSICA ART UNIT PAPER NUMBER 3693 MAIL DATE DELIVERY MODE 06/06/2012 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 RENAN C. PAGLIN ____________ Appeal 2010-006375 Application 10/372,561 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R. MOHANTY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-006375 Application 10/372,561 2 STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 28, 30, 33, and 41 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). SUMMARY OF THE DECISION We AFFIRM. THE INVENTION The Appellants’ claimed invention is directed to future flow securitization between banks in emerging market countries and international correspondent banks (Spec. 1:7-8). Claim 28, reproduced below, is representative of the subject matter on appeal. 28. A method for financing future flows comprising: [1] obligating an emerging market central bank of an emerging market country to deposit funds pursuant to a legal contract between said emerging market central bank, at least two emerging market banks, an offshore trust, and an investor, wherein said offshore trust owns future flow receivables that were previously transferred to said offshore trust by at least one of said at least two emerging market banks; [2] determining whether said emerging market central bank caused said funds to be deposited for said investor's benefit; [3] transferring future flow funds owned by said offshore trust for said at least two emerging market banks' benefit, in case the answer to the determination is affirmative; [4] depositing future flows funds originating offshore with respect to the emerging market country for said investor's benefit, in case the answer to the determination is negative, wherein said future flow funds, prior to said step of depositing, were designated to be Appeal 2010-006375 Application 10/372,561 3 received by said at least two emerging market banks in said emerging market country; and [5] causing said emerging market central bank to pay funds for said at least two emerging market banks' benefit, wherein said funds that are caused to be paid by said emerging market central bank represent compensation for said future flow funds deposited for said investor, and further wherein said compensation is an obligation of said emerging market central bank under said legal contract. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Donnelly, Christopher J. "Future-Flow Securitization Rating Methodology" Rohinton B. Dadina, Michael C. Morcom. Duff & Phelps Credit Rating Co., Chicago: Mar. 1999. Ketkar, Suhas "Development Financing During a Crisis: Securitization of Future Receivables" Suhas Ketkar, Dilip Ratha. Economic Policy and Prospects Group: Apr. 2001. The following rejections are before us for review: 1. Claims 28, 30, 33, and 41 are rejected under 35 U.S.C. § 101 2. Claims 28, 30, and 33 are rejected under 35 U.S.C. § 103(a) as unpatentable over Donnellay, Ketkar, and Official Notice. 3. Claims 41 is rejected under 35 U.S.C. § 103(a) as unpatentable over Donnellay, Ketkar, Tozzoli, and Official Notice. Appeal 2010-006375 Application 10/372,561 4 ANALYSIS Rejection under 35 U.S.C. § 101 The Appellant argues that the rejection of claim 28 under 35 U.S.C. § 101 is improper (Reply Br. 1-2). In contrast, the Examiner has determined that the claim has been properly rejected (Ans. 6-8). We agree with the Appellant. Claim 28 recites several steps which are not abstract ideas or mere mental steps including: “transferring future flow funds”, “depositing future flow funds”, and “causing said emerging market central bank to pay funds” and which serve as more than an abstract idea or insignificant extra-solution activity. For these reasons the rejection of claim 28 and its dependent claims is not sustained. Rejection under 35 U.S.C. § 103(a) The Appellant argues that the rejection of claim 28 under 35 U.S.C. § 103(a) is improper (Br. 4-7). In contrast, the Examiner has determined that claims have been properly rejected (Ans. 3-5, 8-14). We agree with the Appellant. The Examiner cited to Donnelly for disclosing portions of claim limitation [1] directed to obligating an emerging market central bank to deposit funds pursuant to a contract with emerging banks, an offshore trust, and investor (Ans. 4). The Examiner has determined the claim limitation [2] which requires “determining whether said emerging market central bank caused said funds to be deposited for said investor's benefit” and that a portion of claim limitation [4] which requires “wherein said future flow funds, prior to said step of depositing, were designated to be received by said at least two emerging market banks” are admitted prior and would have been obvious at the time of the invention Appeal 2010-006375 Application 10/372,561 5 (Ans.4-5). The Examiner has also cited to Ketkar as teaching that future receivables can either be sold directly or indirectly by the originating company (Ans. 5). The Examiner has determined that the combination of these cited prior art elements to meet the requirements of claim 28 would have been obvious since developing countries have few entities that can justify raising large sums of money (Ans. 5). Claim limitation [2] here requires that a particular determination be made. If the determination in claim limitation [2] is affirmative, the offshore trusts transfers the future flow funds for the at least two emerging banks benefit (see claim limitation [3]). If the determination is negative, then the offshore trust deposits future fund flows for the investors benefit (see claim limitation [4]). The claim is further defined by claim limitation [5]. Here, even taking the Examiners specific citations of admitted prior art elements to be well known, there is no articulated reasoning with rational underpinnings to modify the cited prior elements to meet the requirements and the sequence outlined in the claim. While the determination made in claim [2] may alone be an obvious step, the actions taken based on that determination as further outlined in claim limitations [3], [4], and [5] in view of the outcome would not have been obvious based on the rationale that has been put forth in the rejection of record. For this reason the rejection of claim 28 and its dependent claims is not sustained. CONCLUSIONS OF LAW We conclude that Appellants have shown that the Examiner erred in rejecting the claims as listed in the Rejection Section above. Appeal 2010-006375 Application 10/372,561 6 DECISION The Examiner’s rejection of claims 28, 30, 33, and 41 is reversed. REVERSED MP