Ex Parte Hammock et al

Patent Trial and Appeal Board

Oct 12, 2018

14052715 (P.T.A.B. Oct. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/052,715 10/12/2013
121629 7590 10/16/2018
Finnegan/Capital One
901 New York Ave., NW
Washington, DC 20001
FIRST NAMED INVENTOR
Luke A. Hammock
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
05793.3278-00000 1064
EXAMINER
MADAMBA, CLIFFORD B
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
10/16/2018 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):
CapOne_USPTO@finnegan.com
regional-desk@finnegan.com
terri.mcmillan-solomon @finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LUKE A. HAMMOCK, JANUSZ MICHAEL NICZYPORUK,
DREW JACOBS, and STEVEN G. CHIAGOURIS
Appeal2017-007096
Application 14/052,715 1
Technology Center 3600
Before MARC S. HOFF, CARLL. SILVERMAN, and
MATTHEW J. McNEILL, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 21 and 23--40 which constitute the only pending
claims. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The real party in interest is identified as CAPITAL ONE FINANCIAL
CORPORATION. App. Br. 3.
2 We note Appellants' Reply Brief states "An oral hearing is being
concurrently requested." See Reply Br. 1. However, no proper request for
an oral hearing or payment of the oral hearing fee has been made.
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STATEMENT OF THE CASE
The invention relates generally relate to determining loan terms
based on customer information at the point of sale location. Abstract; Spec.
,r,r 2, 5-7. Claim 21 is exemplary of the matter on appeal ( emphasis added):
21. A system for providing a loan to a user associated with a user
device, comprising:
a storage device storing instructions; and
a processor configured to execute the instructions in the storage
device to:
receive, from the user device, a first loan request for a
loan for the purchase of a first automobile, wherein the first
loan request includes information provided by the user;
assess a loan risk for the first automobile purchase by the
user based on the first loan request;
generate an initial loan offer based on the first loan
request and the loan risk assessment, the initial loan offer
representing an agreement by a loan provider to provide the
loan to the user for the automobile purchase upon acceptance by
the user, and the initial loan offer including first loan terms;
provide the initial loan offer to the user device;
receive, from the user device at a point-of-sale location,
a second loan request for purchase of the first automobile,
wherein the second loan request includes at least one of new or
revised information determined at the point-of-sale location
and not included in the first loan request;
reassess the loan risk for the first automobile purchase
based on the second loan request;
generate a revised loan offer based on the revised loan
request and the reassessed loan risk, the second loan offer
reflecting an agreement by the loan provider to provide a
revised loan to the user for purchase of the first automobile, the
revised loan offer including a second loan term that is different
from the first loan terms; and
provide the revised loan offer to the user device while the
user device remains at the point-of-sale- I ocation,
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wherein the new or revised information includes
automobile information that reflects one or more characteristics
of the first automobile.
Claims Appendix. 2-3.
THE REJECTIONS
Claims 21 and 23--40 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Final Act. 4--
13.
Claims 21-27 and 29--40 are rejected under U.S.C. § I03(a) as being
unpatentable over Benavides, III (US 8,438,048 Bl; issued May 7, 2013)
("Benavides") in view of Abrahams et al., (US 8,521,631 B2; issued Aug.
27, 2013) ("Abrahams"), and Dion (US 2006/0015422 Al; published Jan 19,
2006) ("Dion"). Final Act. 13-27.
Claim 28 is rejected under U.S.C. § I03(a) as being unpatentable over
Benavides, Abrahams, Dion, and Roach et al. (US 2013/0120595 Al;
published May 16, 2013) ("Roach"). Final Act. 27-28.
ANALYSIS
The § 101 Re} ection
The Examiner determines the claims are directed to the abstract idea
of facilitating providing a loan to a customer electronically and is similar to
other concepts that have been found by the courts as abstract. Final Act. 4--5
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(citing Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014)). The
Examiner then determines the claims as a whole are not significantly more
than the abstract idea because the additional elements are generic
components that perform their basic functions. Id. at 5-7. In particular, the
Examiner determines
the recitation of the additional elements including a storage
device storing instructions; and a processor configured to execute the
instructions to implement the steps described above are not enough by
itself to transform the exception into a patentable exception, because
the elements recited are generic computer components performing
generic computer components performing generic computer functions
at a high level of generality. Merely using generic computer
components to perform the identified basic functions does not
constitute meaningful limitations that would amount to significantly
more than the abstract idea.
The storage device recited performs only its basic function of storing
instructions and receiving and transmitting data/information for
implementing the steps described above.
The processor recited performs only its basic function of
processing/executing computer instructions and data/information in
order to implement the steps described above which is a well-known
function of computer processor devices.
In this instance, the computer related devices are only used to facilitate
the execution of steps considered as routine and conventional activities
and, that amount to nothing more than mere instructions such as
"receiving a first loan request for a loan ... "; "assess[ing] a loan risk
... "; "generat[ing] an initial loan offer ... including first loan terms";
"provid[ing] the initial loan offer to the user device ... "; "receiv[ing]
a second loan request ... "; "generat[ing] a revised loan offer ... ";
"providing the revised loan offer to the user device ... " in order to
implement the abstract idea. As such, the claim as a whole does not
amount to significantly more than the abstract idea itself.
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These additional elements are well-understood, routine and
conventional limitations that amount to mere instructions to implement
the abstract idea of facilitating providing a loan to a customer
electronically. Taking these computer limitations as an ordered
combination adds nothing that is not already present when the elements
are taken individually. Therefore, the claim does not amount to
significantly more than the recited abstract idea. Therefore, the claim
is not patent eligible.
Id. at 6-7.
Appellants argue that the Examiner's analysis is improper, there is no
prima facie case, the Examiner misapplies the identified court decisions and
fails to apply applicable court decisions, and errs in concluding the claims
are directed to an abstract idea and, even if the claims are directed to an
abstract idea, the Examiner errs because the claims amount to significantly
more than an abstract idea. App. Br. 9-20; Reply Br. 2-31.
In the Answer, the Examiner refers to Alice and determines claim 21
is directed to the abstract idea of facilitating providing a loan to a customer
electronically and is similar to concepts that have been identified as abstract
such as
a fundamental economic practice ( e.g., concepts relating to the
economy and commerce; performance of financial obligations;
creating a contractual relationship as in BuySAFE), as well as certain
methods of organizing human activity ( e.g., processing loan
information as in DealerTrack), and an idea of itself ( e.g., collecting
and comparing known information as in Classen).
Ans. 3-5.
The Examiner's analysis maps the limitations to the identified abstract
idea, identifies court cases, and concludes the steps of the claim, taken
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individually or as an ordered combination, are directed to abstract ideas. Id.
at 5-7. The Examiner finds that independent claims 32 and 40 recite
substantially the same limitations and are also directed to the identified
abstract idea.
The Examiner finds that Enfish is not applicable because there is no
improvement to computer capabilities and no improvement to the operations
or physical structure of the additional elements. Id. at 8. The Examiner
finds BASCOM is not applicable because the installation of a filtering tool at
a specific locations constituted an inventive concept whereas the current
claims present no such actual improvement. Id. at 9.
The Examiner finds the claims do not amount to significantly more
than an abstract idea because the claimed invention is an abstract idea
implemented on a generic computer. Id. at 9. The Examiner identifies the
claimed steps and finds these steps describe what generic computers do:
"e.g., receive and transmit data and/or information; perform (process)
calculations; store data and/or information and/or instructions, etc.) with
regards to facilitating processing a conventional loan application in an
automated manner" and "[a]s such, there is nothing "significantly more." Id.
at 9-10.
According to Appellants, Appellants' claims are not similar to
buySAFE's claims which recite "receiving ... " and "processing ... [a]
request ... to provide [a] transaction performance guaranty service," and
were therefore "squarely about creating a contractual relationship."
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1351-52, 1355 (Fed. Cir.
2014 ). Reply Br. 18. Appellants argue the claims do not just recite
"creating a contractual relationship" because the claim elements recite a
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particular way to achieve the desired outcome of "creating a contractual
relationship." Id.
Appellants argue the claimed use of a clearing house for car loans in
Dealertrack does not support the Examiner's finding of methods of
organizing human activity because the claimed invention includes elements
that "do not just limit the claims to ... applying for car loans." Id. at 19--20.
Rather, according to Appellants, the claimed invention recites a specific
process of reassessing loan risk and providing a revised loan offer for an
automobile purchase based on revised information. Id.
Appellants argue Classen does not support the Examiner's finding
that the claims are directed to "an idea of itself' because the claimed
invention is not just collecting and comparing known information. Id. at 20.
According to Appellants, the additional steps regarding the second loan
request wherein the reassessed loan risk is not known information, and the
steps of "'reassessing,"' "'generating,"' and "'providing"' are not similar to
"'collecting and comparing information."' Id.
Appellants further argue the Examiner's analysis is improper because
it does not consider whether the claims as a whole are similar to the cited
cases. Id. at 21. Appellants argue the proper analysis is whether the claims
focus on "'a result or effect"' or "'a specific means or method."' Id. at 21-
22 (citing Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294
(Fed. Cir. 2016). Appellants then argue the claims are similar to Amdocs
and DDR Holdings because the claims recite a specific approach to
providing an automobile loan in response to multiple requests for a loan. Id.
at 23.
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Appellants argue the claims are similar to Enfish because they provide
a specific process to solve the problem in which "financial service providers
may not be able to provide the most competitive loan offers to potential
customers, decreasing the probability of a potential customer consummating
a loan offer." Id. at 24--25 (citing Spec. ,r,r 5, 6). According to Appellants,
the claims are not directed to an abstract idea because "the claims enable[]
computerized provisioning of loans to automobile customers based on up-to-
date information" and "plainly improve both the technical problem of
efficiently utilizing computer resources as well as the industry problem of
provisioning loan offers, and the Examiner has failed to rebut this." Id. at
25.
Appellants further argue the Examiner's conclusion that the claims do
not recite significantly more than an abstract idea is erroneous because the
Examiner presents insufficient basis for why the claims are "'well-
understood, routine, and conventional."' Id. at 25-26 ( citing Bascom Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016); McRO, Inc. v. Namco Bandai Games Am. Inc., 23 F. Supp. 3d 1113
(Fed. Cir. 2013). According to Appellants, the Examiner presents no reason
or analysis regarding whether the claimed computer components in
combination with any other additional elements perform well-understood,
routine, conventional activity. Id. at 28.
Appellants argue, like Bascom, the claims recite a "technology-based
solution" for providing a loan to a user associated with a user device. Id. at
30-31. According to Appellants:
These claim elements, in an ordered combination, recite an inventive
concept for reassessing loan risk based on new or revised information
determined at the point-of-sale location and revising a previously
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determined loan offer based at least in part on the reassessed loan risk.
Therefore, the claimed invention provides a technology-based solution
to the technical challenge of providing a loan offer using up-to-date
information through a specific means or method.
Id. at 30.
As discussed below, we are not persuaded by Appellants' arguments
and agree, instead, with the Examiner's conclusion that the claims are patent
ineligible.
As an initial matter, we do not agree with Appellants' arguments
regarding a prima facie case and notice. Regarding the notice requirement
as set forth by 35 U.S.C. § 132, our reviewing court explains:
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
"notify[ing] the applicant ... [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application."
35 U.S.C. § 132. That section "is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and
seeking to counter the grounds for rejection." Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Here, the Examiner presents adequate basis for Appellants to respond.
See Final Act. 3-13; Ans. 3-10.
The Supreme Court in Alice, reiterated the framework set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012)
for "distinguishing patents that claim ... abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
The first step in the analysis is to determine if the claim is directed toward a
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patent-ineligible concept and, if so, the second step is to determine whether
there are additional elements that transform the nature of the claim into a
patent eligible application. Id. (citing Mayo, 566 U.S. at 78-79). The
second step searches for an inventive concept that is sufficient to ensure that
the patent amounts to significantly more than a patent on the patent-
ineligible concept. Id. (citing Mayo, 566 U.S. at 72-73).
The question is not whether claims mention a computing environment
but what they are "directed to." The "directed to" inquiry applies a stage-
one filter to claims, considered in light of the specification, based on
whether "their character as a whole is directed to excluded subject matter."
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015); see Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376,
(Fed. Cir. 2016) (inquiring into "[t]he focus of the claimed advance over the
prior art"); Enfzsh, 822 F.3d at 1335. "The 'abstract idea' step of the inquiry
calls upon us to look at the 'focus of the claimed advance over the prior art'
to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016)). "In determining the eligibility of
respondents' claimed process for patent protection under § 101, their claims
must be considered as a whole." Diamond v. Diehr, 450 U.S. 175, 188
(1981).
We conclude that each of Appellants' claims on appeal is
distinguishable from the type of claim considered by the court in Enfish,
DDR, and Bascom.
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We conclude none of Appellants' claims is "directed to an improvement in
the functioning of a computer," as was found by the court regarding the
subject claim in Enfish, 822 F.3d at 1338. To the extent that the recited
steps or acts may be performed faster or more efficiently using a computer,
our reviewing court provides applicable guidance:
While the claimed system and method certainly purport to
accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself See Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required
calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed
subject matter.").
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (emphasis added). See also Electric Power Grp., v. Alstom S.A., 830
F.3d 1350 (Fed. Cir. 2016), to the extent that Appellants' claims similarly
collect information, analyze it in some fashion, and present or communicate
the result.
Applying this reasoning to Appellants' claims on appeal, we similarly
find any purported faster or more efficient performance of the claimed steps
or acts merely comes from the capabilities of a general-purpose computer
and/ or computer related elements, rather than from Appellants' claimed
steps or functions.
Appellants' reliance on DDR Holdings and Bascom is unpersuasive
because claim 21 provides no improvement of the operation of a computer
system commensurate with improvement to computer technology, and there
is no ordered arrangement set forth which is non-conventional. The
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Specification supports the view that the elements recited in claim 21 are
conventional. See, e.g., Spec. ,r,r 26-36, 70.
In DDR, the claims at issue involved, inter alia, "web page[] displays
[with] at least one active link associated with a commerce object associated
with a buying opportunity of a selected one of a plurality of merchants."
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 1249, (Fed. Cir.
2014) (claim 18 of Ross, US 7,818,399 Bl, Oct. 19, 2010). The Federal
Circuit found the claims in DDR to be patent eligible under step two of the
Mayo/Alice test because "the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." Id. at 1257. Specifically, the Federal
Circuit found the claims addressed the "challenge of retaining control over
the attention of the customer in the context of the Internet." Id. at 1258. The
rejected claims are dissimilar to DDR 's web page with an active link, and
the Specification does not support the view that the computer related claim
elements are unconventional, supra.
The claims before us are dissimilar to Bascom's improvement over
technical ways of filtering content on the Internet that improves the
computer itself. The claims before us are dissimilar to McRo' s computer
automation in which "[i]t is the incorporation of the claimed rules, not the
use of the computer, that 'improved [the] existing technological process' by
allowing the automation of further tasks." McRO, Inc. v. Bandai Namco
Games America Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
We additionally conclude Appellants' claims are analogous to the
method claim considered by the court in Electric Power Group, at least to
the extent that Appellants' claims are similarly directed to "merely selecting
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information, by content or source, for collection, analysis, and display
[which] does nothing significant to differentiate a process from ordinary
mental processes." Id. at 1355. The claims do not require any
nonconventional computer or network components, or even a "'non-
conventional and non-generic arrangement of known, conventional pieces,"'
but merely call for performance of the claimed information collection,
analysis, and display functions on generic computer components and display
devices. Id.
Our reviewing court has "made clear that mere automation of manual
processes using generic computers does not constitute a patentable
improvement in computer technology." Credit Acceptance Corp. v.
Westlake Svcs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). Like the claims in
Credit Acceptance, the focus of the claims is on the business practice, "and
the recited generic computer elements 'are invoked merely as a tool."' Id.
(citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)); see
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir.
2015) (collecting cases).
Applying the first step of Alice, we agree with the Examiner that the
claims are directed to the identified abstract idea. In addition, we agree the
Examiner has considered the abstract idea in the aggregate. Accordingly, we
find that the claims are directed to a patent-ineligible concept.
Having determined that the claims are directed to a patent-ineligible
concept, step 2 of the analysis considers whether the claims contain an
inventive concept such as additional limitations that add significantly more
to the claim so that they do not fully cover the abstract idea itself See Alice,
134 S. Ct. at 2357. Here, we agree with the Examiner that no inventive
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concept is present. Moreover, the hardware features are the type of generic
element that has been determined to be insufficient by the Supreme Court to
transform a patent-ineligible claim into one that is patent-eligible. See Alice,
134 S. Ct. at 2358. The claims include no limitations that prevent it from
covering the abstract idea itself. Therefore, we are unpersuaded by
Appellants' argument that the claims constitute an inventive concept that is
significantly more than a patent on the patent-ineligible concept.
Regarding preemption, "[ w ]hile preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility .... Where a patent's claims are deemed only
to disclose patent ineligible subject matter under the Mayo framework, as
they are in this case, preemption concerns are fully addressed and made
moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362---63 (Fed. Cir. 2015) ("that the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract").
In view of the above, we sustain the rejection of independent claims
21, 32, and 40, and dependent claims 23-31 and 33-39 as these claims are
not argued separately. See 37 C.F.R. § 4I.37(c)(l)(iv).
The§ 103(a) Rejection
Appellants argue the Examiner errs in finding the combination of
Benavides, Abrahams, and Dion teaches "reassessing a loan risk for the first
automobile based on such a second loan request and generating a revised
loan offer based on such a reassessed loan risk." App. Br. 21. In particular,
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Appellants argue the combination does not teach the disputed claim 21
limitations:
receive, from the user device at a point-of-sale location, a
second loan request for purchase of the first automobile, wherein the
second loan request includes at least one of new or revised
information determined at the point-of-sale location and not included
in the first loan request;
reassess the loan risk for the first automobile purchase based
on the second loan request;
generate a revised loan offer based on the revised loan request
and the reassessed loan risk.
App. Br. 21-25; Reply Br. 31-34.
In the Final Action, the Examiner finds Benavides teaches receiving a
loan request and providing a loan offer. Final Act. 13-15 ( citing Benavides
3:10-16, 5:41--46, 1:52-58, 8:60-64, 9:63-67). The Examiner finds
Abrahams teaches risk credit assessment in the evaluation in loan decisions.
Id. ( citing Abrahams 3: 11-17, 4:28-34). The Examiner concludes that one
of ordinary skill in the art would utilize the Benavides' loan process teaching
and Abrahams' credit risk assessment to enhance profitability although
reducing risk exposure. Id. at 14. The Examiner finds Dion teaches
processing a second loan request and one of ordinary skill in the art would
incorporate Dion's teaching into Benavides to make borrowing more
affordable for the buyer by making it possible for the borrower to modify
terms of a loan. Id. at 15-17 (citing Dion ,r,r 8, 9, 28, 33, 37).
Appellants argue the Examiner's conclusion of obviousness is
conclusory and there is no teaching in Dion of assessing any loan risk. App.
Br. 22-24. According to Appellants, Dion "'biweekly payment schedule"'
is just a payment schedule and the only changes to the pre-existing financing
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are the "'supplemental allowance[s],"' "'revised loan payment,"" and the
"'revised loan term."' Id. at 24 ( citing Dion ,r,r 28, 29). According to
Appellants, Dion does not teach these changes involve any risk assessment,
Dion teaches away from changes to the pre-existing financing because Dion
aims to have the "'revised loan payment"' be "'substantially similar"' to the
"'initial loan payment"' and the "'revised loan term"' be "'substantially
similar"' to the "'initial loan term."' Id. Appellants further argue, because
Dion does not teach re-assessing a loan risk, it cannot teach the limitation
"'generat[ing] a revised loan offer based on ... the reassessed loan risk."
Id.
In the Answer, the Examiner finds that Dion expressly teaches that the
"' [b ]orrower may renegotiate existing financing or obtain new offer for
financing"' and the Examiner finds Dion teaches a "loan for a customer or
borrower may be reassessed ('renegotiated')." Ans. 12 ( citing Dion Fig. 7,
element 750). The Examiner "further asserts that whether a loan constitutes
a first or second loan request does not affect the functionality of the
invention and/or how the invention is supposed to perform" and "[i]n other
words, the steps for processing a loan transaction generally remain[] the
same and is merely repeated for each subsequent transaction." Id. The
Examiner additionally "asserts that the assessment of credit risk in the
issuance of financing and/or loan products is both well-known and
commonplace in the industry." Id. ( citing Dion ,r 29).
In the Reply Brief, Appellants argue the Examiner's reference to
"'routine and conventional"' is not the correct legal standard and the
Examiner is applying hindsight. Reply Br. 31-32. Appellants argue Dion
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does not teach a reason why unwillingness to accept biweekly payments is
due to concern with risks. Id. at 33 (citing Dion ,r,r 33, 36).
We are not persuaded by Appellants' arguments that the Examiner's
findings and claim interpretation are unreasonable, overbroad, or
inconsistent with Appellants' Specification. We note the terms "assess" and
"re-assess" a "loan risk" are not defined in the Specification. We agree with
the Examiner that Dion's teaching that a second loan may or may not be
acceptable constitutes "re-assess[ing]" a "loan risk" as broadly, but
reasonably, interpreted. Claim terms in a patent application are given the
broadest reasonable interpretation consistent with the specification, as
understood by one of ordinary skill in the art. In re Crish, 393 F.3d 1253,
1256 (Fed. Cir. 2004).
Moreover, even assuming Dion does not teach "reassess the loan
risk," we agree with the Examiner's finding that "the steps for processing a
loan transaction generally remain[] the same [and] is merely repeated for
each subsequent transaction." See supra, Ans. 12. We agree with the
Examiner's finding that the combination of Benavides and Abrahams
teaches the first loan and the loan risk assessment, and Dion teaches at least
the second loan. See Final Act. 13-15. Therefore, one of ordinary skill in
the art would employ the Abrahams loan risk assessment for the first loan
and for the second loan. We note further that, contrary to Appellants'
argument, the Dion second loan is not limited to the original amount. See
Final Act. 13 ( citing Dion ,r 31 ). We also note that Abrahams teaches
various types of loans, including automobile loans. See, e.g., Abrahams
1:52-58.
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As stated by the Supreme Court, the Examiner's obviousness rejection
must be based on:
"[S]ome articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness." . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
Appellants argue the references individually although the rejection is
based on the combination of the teachings of the cited references. In re
Keller, 642 F.2d 413, 426 (CCPA 1981) ("[O]ne cannot show non-
obviousness by attacking references individually where, as here, the
rejections are based on combinations of references." ( citation omitted)); In
re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Appellants also argue an unreasonably narrow teaching of the cited
references and an overly demanding standard of obviousness. The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference; nor is it that
the claimed invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of the references
would have suggested to those of ordinary skill in the art. Keller, 642 F.2d
at 425.
In view of the above, we sustain the rejection of independent claim
21, and independent claim 40 which is argued together with claim 21. We
also sustain the rejection of independent claim 32 which is commensurate in
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Appeal2017-007096
Application 14/052,715
scope with claims 21 and 40. We also sustain the rejection of dependent
claims 23-31 and 33-39 as these claims are not argued separately. See
37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision rejecting claims 21 and 23--40
under 35 U.S.C. § 103(a).
We affirm the Examiner's decision rejecting claims 21 and 23--40
under 35 U.S.C. § 101.
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)(l )(iv).
AFFIRMED
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