Ex Parte Coble

Patent Trial and Appeal Board

Sep 17, 2012

10904682 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte PATRICK C. COBLE
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Appeal 2011-004125
Application 10/904,682
Technology Center 3600
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Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-004125
Application 10/904,682

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-22. We have jurisdiction under 35 U.S.C. § 6(b).

STATEMENT OF THE DECISION
We REVERSE.1

BACKGROUND
Appellant’s invention relates to a computer-implemented method and
system for generating a recommendation as to whether to file for relief from
a bankruptcy stay with respect to a particular account and associated
collateral based on historical statistics on bankruptcy filings and information
about the collateral and depreciation of the collateral (Spec., [para. 4]).
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A computer-implemented method of generating a
recommendation as to whether to file for relief from bankruptcy
relative to an account and collateral associated with the account,
the method comprising:
receiving data associated with the account via a
computer;
determining a cycle time for discharge of the bankruptcy
based on the received data;
determining an estimate of a monetary amount of
depreciation saved based at least in part on a depreciation rate

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed July 6, 2010) and the Examiner’s Answer (“Ans.,” mailed October 5,
2010).
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for the collateral, the cycle time, and a predicted time for
obtaining relief from the bankruptcy;
comparing the monetary amount of depreciation saved to
a cost for obtaining relief; and
producing, via the computer, the recommendation for the
account.

THE REJECTIONS
The following rejections are before us for review:
Claim 1 stands rejected under 35 U.S.C. §112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
Claims 1-22 are rejected under under 35 U.S.C. § 103(a) as
unpatentable over Basch (US 6,119,103, iss. Sep. 12, 2000) in view of
Hoffman (Hoffman and Cymos, Disaffirming Reaffirmation, Commercial
Law Journal, v105, n1, 1-19 (2000)) and further in view of Capson (US
5,701,499, iss. Dec. 23, 1997).

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.). Additional facts
may appear in the Analysis section.
FF1. Basch discloses a computer-implemented system and method
for assessing the financial risk level associated with an account and/or an
account holder based on the account holder’s transaction pattern and/or
Appeal 2011-004125
Application 10/904,682

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transactions pertaining to that account holder across multiple accounts
and/or account issuers (Basch, col. 1, ll. 13-20).
FF2. Basch at column 1, lines 36-47 does not disclose or suggest
determining a cycle time for discharge of a bankruptcy proceeding.

ANALYSIS
Indefiniteness
We agree with Appellant that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 112, second paragraph, as being indefinite. The Examiner
maintains that the rejection is proper because “[i]t is unclear [in claim 1]
who or what is doing the ‘determining [a cycle time]’ and the ‘estimating [an
amount of depreciation saved]’” (Ans. 3-4). However, there is no
requirement that an applicant explicitly recite “who or what” performs each
step of a method claim. Nor does the lack of such a recitation render claim 1
insolubly ambiguous or otherwise indefinite. See Star Sci., Inc. v. R.J.
Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008) (Only claims
“not amenable to construction or insolubly ambiguous are indefinite.”).
One of ordinary skill in the art would understand what is claimed
when claim 1 is read in light of the Specification. See Orthokinetics, Inc. v.
Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (The test
for definiteness under 35 U.S.C. § 112, second paragraph is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.”). Therefore, we will not sustain the Examiner’s
rejection of claim 1 under 35 U.S.C. § 112, second paragraph.
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Prior Art Rejections
Independent claim 1 and dependent claims 2-6
Appellant argues that Basch does not disclose or suggest “determining
a cycle time for discharge of the bankruptcy based on the received data,” as
recited in claim 1 (Br. 7-8). We agree.
The Examiner cites column 1, lines 36-47 of Basch as disclosing this
limitation. However, that portion of Basch merely discloses that when an
account holder declares bankruptcy, the monies lost by account issuers may
be substantial, and that these losses increase the cost of credit to all current
and potential account holders. Basch, at column 1, lines. 36-47, does not
disclose or suggest determining a cycle time for discharge of a bankruptcy
proceeding based on received data.
Therefore, we will reverse the rejection of claim 1 under 35 U.S.C.
§ 103. We also will reverse the § 103 rejection of dependent claims 2-6. Cf.
In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious.”).

Independent claims 7, 13 and 15 and dependent claims 8-12, 14 and 16-22
Independent claims 7, 13, and 15 contain language substantially
similar to that of claim 1. We will, therefore, reverse the rejections under
§ 103 of independent claims 7, 13, and 15 and dependent claims 8-12, 14,
and 16-22 for the same reasons as set forth above with respect to claim 1.
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DECISION
The Examiner’s rejection of claims 1-22 under 35 U.S.C. § 103(a) is
reversed.

REVERSED

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