Ex Parte MartignoniDownload PDFPatent Trial and Appeal BoardFeb 6, 201411789331 (P.T.A.B. Feb. 6, 2014) Copy Citation 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. 11/789,331 04/24/2007 Thomas M. Martignoni RV III (FMartignoni III) 7783 82343 7590 02/06/2014 Scott P. Zimmerman, PLLC - Others P.O. Box 3822 Cary, NC 27519 EXAMINER FIELDS, BENJAMIN S ART UNIT PAPER NUMBER 3624 MAIL DATE DELIVERY MODE 02/06/2014 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte THOMAS M. MARTIGNONI ____________ Appeal 2013-009677 Application 11/789,331 Technology Center 3600 ____________ Before: MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and MICHAEL W. KIM, Administrative Patent Judges. KIM, Administrative Patent Judge. DECISION ON APPEAL Appeal 2013-009677 Application 11/789,331 2 STATEMENT OF THE CASE This is an appeal from the final rejection of 1-6, 9, and 12-221. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6. The invention relates to lines of credit in reverse mortgages (Spec. ¶ 3). Claim 1, reproduced below, is further illustrative of the claimed subject matter. 1. A method for adjusting a loan, comprising: retrieving from memory a value of collateral for the loan; retrieving from the memory a lump sum associated with the loan to be paid to a borrower; determining by a computer processor a change in the value of the collateral after closing of the loan; and adjusting the lump sum after the closing of the loan based on the change in the value of the collateral. Claims 1-6, 9, and 12-22 are rejected under 35 U.S.C. § 112, second paragraph, for indefiniteness. Claims 1-6, 9, and 12-22 are rejected under 35 U.S.C. § 102(b) as anticipated by Jannah (US 2002/0055905 A1, publ. May. 9, 2002). We REVERSE and enter a NEW GROUND of rejection pursuant to 37 C.F.R. § 41.50(b). 1 Our decision will make reference to the Appellant’s Appeal Brief (“App. Br.,” filed March 24, 2013) and the Examiner’s Answer (“Ans.,” mailed April 25, 2013). Appeal 2013-009677 Application 11/789,331 3 ANALYSIS Indefiniteness Rejection of Claims 1-6, 9, and 12-22 The Examiner asserts the following: “The Examiner acknowledges the Applicant’s remarks, comments, and amendments to Claims 1-21 in view of the BPAI originally asserted 35 U.S.C. 112 2nd Paragraph Rejection of Claims 1-21 . . . , however, maintains the rejection (BPAI entered New Ground of Rejection)” (Ans. 4). However, the claims appear to have been amended in response to the original rejection made by the Board. For example, claims 7, 8, 10, and 11 were cancelled, but remain rejected, even though they are no longer pending. Indeed, the Examiner does not provide any analysis concerning the rejection, let alone how the rejection is applicable to the currently pending claims. Moreover, Appellants appear to share our confusion, as they have not addressed this rejection in the Appeal Brief. On these facts, we are unclear as to whether the rejection is still pending, but assuming that it is, we do not sustain the rejection because the Examiner has not made out an adequate prima facie case for indefiniteness. Obviousness Rejection of Claims 1-6, 9, and 12-22 We are persuaded the Examiner erred in asserting that Jannah discloses “adjusting the lump sum after the closing of the loan based on the change in the value of the collateral,” as recited by independent claim 1 (App. Br. 7-17). Pages 7 and 9 of the Answer assert that Jannah discloses the aforementioned claim limitation, but then does not provide any analysis as to how Jannah discloses these claim limitations. Instead, the Answer merely follows the conclusory analysis with a string cite of the Abstract, two figures, 17 paragraphs, and seven columns of claims in Jannah. Of those, the Answer placed the most emphasis on paragraphs [0035] to [0038], and Appeal 2013-009677 Application 11/789,331 4 so we have examined those paragraphs to see if they support the Answer’s assertion that Jannah discloses the aforementioned claim limitation. We find that they do not. Jannah discloses a lender calculating a repayment schedule for a loan (¶ [0035]-[0037]). Jannah discloses a lender taking many factors into account when determining what interest rates and what amounts to loan when making a reverse mortgage loan (¶ [0038]). Among the factors considered include potential for negative equity and potential for depreciation (¶ [0038]). However, Jannah discloses that all these factors are taken into account prior to an issuance of the loan by reducing the amount of the loan, and not “after closing,” as recited in independent claim 1. Independent claims 12 and 20-22 each recite similar claim limitations. The analysis for those claims is the same as set forth above for independent claim 1, and need not be repeated here. We do not sustain the rejection of independent claims 1, 12, and 20-22, or their dependent claims 2-6, 9, and 13-19. NEW GROUND OF REJECTION Pursuant to our authority under 37 C.F.R § 41.50(b), we enter a new grounds of rejection of independent claims 1, 12, and 20-22 under 35 U.S.C. § 101 for failing to recite statutory subject matter. Specifically, with respect to independent claim 1, we determine that the recitations of “memory” and “computer processor” are de minimis recitations of structure insufficient to render otherwise unpatentable abstract ideas and mental processes into statutory subject matter. The Supreme Court has held that abstract ideas are not patentable subject matter. Bilski v. Kappos, 130 S. Ct. 3218, 3229 (2010) (“[i]n searching for a limiting principle, this Court’s precedents on the Appeal 2013-009677 Application 11/789,331 5 unpatentability of abstract ideas provide useful tools”). In particular, the Supreme Court approvingly cited Parker v. Flook, 437 U.S. 584 (1978) for “the proposition that the prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or adding ‘insignificant postsolution activity.’” Id. at 3230. Similar to the petitioner’s attempts to patent risk hedging in Bilski, Appellants are attempting to patent the intangible abstract idea of adjusting reverse mortgage payments. On one level, Appellants are attempting to use the memory and computer processor to limit this otherwise unpatentable abstract idea to a computer environment, which is disfavored by Bilski and Flook. On another level, the mere retrieval of data from memory in the two “retrieving” steps and the one “determining” step are post-solution activities insignificant to the core of the invention, and thus are also disfavored by Bilski and Flook. To hold otherwise would allow Appellants to easily circumvent the unpatentability of abstract ideas by limiting it to a computer environment, or merely storing and retrieving such abstract ideas from memory. Our characterization of the “determining” step as mere retrieval is accurate, as the step recites “determining by a computer processor a change in the value of the collateral after closing of the loan,” which does not involve the computer processor performing any action other than retrieving the change in value of the collateral. Our above analysis is equally applicable to independent claims 21 and 22, which are also method claims, as well as independent claims 12 and 20. While independent claims 12 and 20 respectively recite a system and a computer readable memory, they also recite method steps reflecting the Appeal 2013-009677 Application 11/789,331 6 aforementioned abstract idea in the body of their claims. Accordingly, this too is an impermissible attempt to limit an otherwise unpatentable abstract idea to a computer environment. In setting forth this new ground, we only reject independent claims 1, 12, and 20-22, and leave any potential rejection of dependent claims 2-6, 9, 11, and 13-19 on these or others grounds to the discretion of the Examiner. DECISION The decision of the Examiner to reject claims 1-6, 9, and 12-22 is REVERSED. We newly reject independent claims 1, 12, and 20-22 under 35 U.S.C. § 101, pursuant to our authority under 37 C.F.R. § 41.50(b). FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . Appeal 2013-009677 Application 11/789,331 7 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . 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; 37 C.F.R. § 41.50(b) Klh Copy with citationCopy as parenthetical citation