Ex Parte Avrick

Patent Trial and Appeal Board

Jul 11, 2017

14025972 (P.T.A.B. Jul. 11, 2017)

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.
14/025,972 09/13/2013 David Avrick AVRI13U01 4045
62973 7590
JAY M. SCHLOFF
Aidenbaum Schloff and Bloom PLLC
6960 Orchard Lake Road
Suite 250
West Bloomfield, MI 48322
EXAMINER
CHAKRAVARTI, ARUNAVA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
07/13/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
j schloff @ aidenbaum.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID AVRICK
Appeal 2015-0081951
Application 14/025,9722
Technology Center 3600
Before JOSEPH A. FISCHETTI, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 5—8, 12—14, 17, and 18. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
Apr. 30, 2015) and Reply Brief (“Reply Br.,” filed Sept. 16, 2015), and the
Examiner’s Answer (“Ans.,” mailed July 16, 2015) and Non-Final Office
Action (“Non-Final Act.,” mailed Oct. 23, 2014).
2 Appellant identifies the inventor, David Avrick, as the real party in
interest. App. Br. 3.
Appeal 2015-008195
Application 14/025,972
CLAIMED INVENTION
Appellant’s claimed invention “relates to a system and method for
analyzing mortgage-backed securities and identifying potential borrowers.”
Spec. 12.
Claims 5 and 8 are the independent claims on appeal. Claim 5,
reproduced below, is illustrative of the subject matter on appeal:
5. A computer-implemented method for identifying
potential mortgage borrowers, the method comprising the steps
of:
receiving on a non-transitory computer readable medium
listing data for at least one real property, the listing data including
at least one listing address;
obtaining on the non-transitory computer readable
medium client data, the client data including at least one of at
least one client name and at least one client address;
storing the client data and the listing data in at least one
database on the non-transitory computer readable medium; and
comparing the client data and the listing data to determine
whether a client of the client data may be in need of a new
mortgage loan or may otherwise be purchasing or financing a
new real property, wherein comparing the client data and the
listing data comprises the steps of:
retrieving a listing address based on the listing data
for each at least one real property; and
matching a client address corresponding to a client
name with the listing address,
wherein a user may thereafter repeat at least one of said
receiving step and said obtaining step in order to update the
listing data and the client data respectively at any time by
retrieving updated listing data and client data, and wherein the
user may thereafter repeat said storing step in order to update at
least one of the client data and the listing data stored in the at
least one database, and
wherein the user may thereafter repeat said comparing step
in order to determine whether a client address corresponding to
a client name of the client data matches any of the updated listing
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Application 14/025,972
data or whether a listing address matches any of the updated
client data, and wherein the method, when performed on a
computer, is capable of comparing the client data and the listing
data in order to instantaneously identify a plurality of potential
mortgage borrowers, and wherein the method must be performed
on a computer in order to effectuate the instantaneous
identification of the plurality of potential mortgage borrowers,
and
wherein prior to the performance of the method it is
unknown whether a client of the client data is in need of a new
mortgage loan, and wherein performing the method results in a
list of identified potential mortgage borrowers, which list is
stored on the non-transitory computer readable medium.
REJECTIONS
Claims 5—8, 12—14, 17, and 18 are rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement.
Claims 5—8, 12—14, 17, and 18 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 5—8, 12—14, 17, and 18 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Masella (US 2005/0125334 Al, pub. June 9, 2005) and
Ginn (US 2013/0091051 Al, pub. Apr. 11, 2013).
ANALYSIS
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v. Faulting,
Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath Inc. v.
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Application 14/025,972
Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But, the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellant was in
possession of the claimed invention. See id.
In rejecting claims 5—8, 12—14, 17, and 18 under 35 U.S.C. § 112, first
paragraph, the Examiner finds that the Specification does not include
explicit or implicit support for the following two limitations: (1)
“instantaneous” identification of potential mortgage borrowers, as recited in
independent claims 5 and 8, and (2) the client in need of a new mortgage
loan being “unknown,” as recited in independent claim 5. Non-Final Act.
3^4.
Regarding limitation (2), we agree with Appellant that a person of
ordinary skill in the art would understand from the Specification that
Appellant was in possession of the claimed method, including it being
“unknown” whether the client is in need of a new mortgage loan. See, e.g.,
Spec. ]fl5.
Regarding limitation (1), Appellant argues that a computer is
mentioned in paragraph 31 of the Specification, and that “[tjhose of ordinary
skill in the art would understand that such a disclosure at least implies the
presence of ‘instantaneously’ identifying,” because processing speeds of a
computer render the claimed method and system capable of generating
instantaneous results, and because the claimed system and method are “self-
contained,” requiring no “further or third party processing^] such that the
identification is necessarily instantaneous.” App. Br. 7—8. In the Reply
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Application 14/025,972
Brief, the Appellant additionally cites paragraph 33 as describing that the
retrieved data must be “accurate and reliable” as providing the requisite
support.
Yet, as the Examiner observes, “the mere use of a computer does not
render a result instantaneous.” Ans. 3. We agree with the Examiner that the
Specification does not convey with reasonable clarity to those skilled in the
art that, as of the filing date, Appellant was in possession of the claimed
invention, including “instantaneous” identification.
Therefore, we sustain the Examiner’s rejection of claims 5—8, 12—14,
17, and 18 under 35 U.S.C. § 112, first paragraph.
Non-Statutory Subject Matter
We are not persuaded by Appellant’s argument that the Examiner
erred in rejecting claims 5—8, 12—14, 17, and 18 under 35 U.S.C. § 101
because the claimed method “must be performed on a computer.” App.
Br. 8 ; see also Reply Br. 4—5. Appellant contends that the invention could
“theoretically process[] millions of client data and listing[s] daily to generate
mortgage leads, which is not possible to do without a computer.” App.
Br. 9. In the Reply Brief, Appellant further contends that “[wjorking
without a computer . . . would take that person approximately 95 days
(working eight hours a day) to complete the comparison of bank clients
against the listings for a single county — after which long period of time, the
comparison results have lost value if they are not entirely out of date.”
Reply Br. 5.
We begin our analysis at the Mayo second step given Appellant’s
argument is based only on the computer implementation aspect of the
claims. Appellant’s argument is unpersuasive because computer
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implementation of an abstract idea does not supply the necessary inventive
concept to render an abstract idea patent eligible. See Alice Corp. Pty. Ltd.
v. CLS Bank Int’l, 134 S. Ct. 2347, 2358 (2014) (citingMayo Collaborative
Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1301 (2012)).
Other than reciting that the claimed comparison must be performed by
computer implementation, Appellant does not argue or show that the claims
are directed to an improvement to the functioning of the computer itself, or
solve a problem unique to the Internet. See Alice, 134 S. Ct. at 2359; see
also DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed.
Cir. 2014).
Appellant presents no other arguments. Therefore, we sustain the
Examiner’s rejection of claims 5—8, 12—14, 17, and 18 under 35 U.S.C.
§101.
Obviousness
Appellant argues that the Examiner erred in rejecting claims 5 and 8
under 35 U.S.C. § 103(a) because Masella and Ginn, alone or in
combination, fail to disclose or suggest “comparing the client data and the
listing data to determine whether a client of the client data may be in need of
a new mortgage loan or may otherwise be purchasing or financing a new real
property,” as recited in claim 5, and similarly recited in claim 8. App.
Br. 10-14; see also Reply Br. 3—5). The Examiner finds that Masella and
Ginn describe the argued limitation. See Non-Final Act. 6—11 (citing
Masella, Abstract, Figs. 1—10, 4, 7, 27—28, 56, 63, 80, 82 claim 9; citing
Ginn, Abstract, Figs. 1—8,147).
Masella relates to a method and system for processing mortgage leads
to facilitate an efficient distribution of mortgage leads from lead suppliers to
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lead buyers. Masella 1 8. Masella describes a known and established
mortgage lead industry, providing “qualified, in-market, prospective
mortgage borrowers.” Id. 14. The invention of Masella describes coupling
such mortgage lead suppliers to prospective borrowers either directly or
through intermediary parties to obtain mortgage loan information. Id. 127.
The mortgage lead suppliers, in turn, collect relevant information from
prospective borrowers, and format the information for transmission as a
“mortgage lead” to Masella’s mortgage lead interface. Id. 128. The
mortgage lead interface of Masella filters and parses leads for selective
distribution (i.e., matching) to a plurality of mortgage lenders and/or
brokers. Id. 1 56; see also id. Tffl 80-81. Masella, thus, describes processing
leads that have been obtained elsewhere, but not determining a lead, let
alone determining by comparing client data and listing data, as recited in
claims 5 and 8. Indeed, there is no indication that in Masella that any listing
data is consumed.
The Examiner acknowledges that Masella does not describe receiving
“listing data” for at least one real property including at least one listing
address. Non-Final Act. 11. However, the Examiner finds that Ginn
describes receiving listing data for at least one real property using a
conventional property listing services, such as the Multiple Listing Service
(“MLS”). Id. (citing Ginn Abstract, Figs. 1—8,47). The Examiner
concludes that it would have been obvious to a person of ordinary skill at the
time of the invention to modify Masella’s system for processing mortgage
leads to include “the above noted [i.e., MLS] disclosure of Ginn as it relates
to [a] system for evaluating mortgage prepayment risk.” Id. The Examiner
reasons that to would have been obvious to combine the references “to
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determine prepayment risk from a list of matching mortgage leads.”
Ans. 10. In the Answer, the Examiner further explains that “a simple
method to determine whether a party may be in need of a new mortgage loan
would be to compare the listing data [as described by Ginn] with a list of
parties who may be interested in purchasing the listed property with a
mortgage [as described by Masella].” Ans. 5.
Yet, Masella is clear that each prospective borrower provided by the
mortgage lead supplier is “typically about to buy a home or wants to
refinance an existing home.” Masella 17. It is unclear why one of ordinary
skill in the art would have been motivated to perform any further matching
on the leads based on listing data, such as the MLS listing data described by
Ginn. It also is unclear how any such further comparison would result in
“evaluating mortgage prepayment risk.”
The Examiner has not established that a person of ordinary skill in the
art, at the time of Appellant’s invention, would have had an apparent reason,
in view of Ginn, to arrive at the claimed comparing, as recited in claim 5,
and similarly recited in claim 8. See KSR Int 7 Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (establishing a prima facie case of obviousness requires an
apparent reason to modify the prior art as proposed by the Examiner).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 5 and 8, and dependent claims 6, 7, 12—14, 17, and 18
under 35 U.S.C. § 103(a).
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DECISION
The Examiner’s rejection of claims 5—8, 12—14, 17, and 18 under
35 U.S.C. § 112, first paragraph, is affirmed.
The Examiner’s rejection of claims 5—8, 12—14, 17, and 18 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 5—8, 12—14, 17, and 18 under
35 U.S.C. § 103(a) reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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