Ex parte DONNER - Page 2




          Appeal No. 96-2552                                                          
          Application 08/161,816                                                      

               This is an appeal under 35 U.S.C. § 134 of the final                   
          rejection of claims 1, 3-8, 10-12, 14-16, 18, 19, and 21-27.                
          Claims 2, 9, 13, 17, and 20 have been canceled.  The amendment              
          after final received March 24, 1995 (Paper No. 14), and the                 
          amendment after final received March 28, 1996 (Paper No. 23),               
          have not been entered.                                                      
               We reverse.                                                            
                                     BACKGROUND                                       
               The disclosed invention is directed to an apparatus and                
          computer-implemented process to automatically determine an                  
          estimated value of an intellectual property portfolio.                      
               Claim 11 reads as follows:                                             
                    11.  A computer-implemented intellectual property                 
               method for automatically determining a machine                         
               implemented estimated value of an intellectual property                
               portfolio, comprising the steps of:                                    
                    (a)  storing first objectively determinable                       
               characteristics of representative intellectual property                
               portfolios and objectively determinable values                         
               corresponding to each of the representative intellectual               
               property portfolios, the first objectively determinable                
               characteristics and the objectively determinable values                
               forming a baseline against which to assess the estimated               
               value of the intellectual property portfolio;                          
                    (b) analyzing the intellectual property portfolio                 
               stored in an intellectual property database to determine               
               second objectively determinable characteristics of the                 
               intellectual property portfolio to be estimated;                       
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