Ex Parte Hammour et al

Patent Trial and Appeal Board

Mar 29, 2013

10680474 (P.T.A.B. Mar. 29, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/680,474 10/07/2003 Mohamad Lutfi Hammour Guide-P1-03 5187
28710 7590 04/01/2013
PETER K. TRZYNA, ESQ.
P O BOX 7131
CHICAGO, IL 60680
EXAMINER
PAULS, JOHN A
ART UNIT PAPER NUMBER
3686
MAIL DATE DELIVERY MODE
04/01/2013 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 MOHAMAD LUTFI HAMMOUR,
LARRY KERSHNER, and
HARVEY WEINER
____________

Appeal 2011-010143
Application 10/680,474
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Mohamad Lutfi Hammour, et al. (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1-27. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

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SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. Apparatus including:
an originator computer programmed to carry out the operations
of:
receiving input including a property value and a property
financing amount;
computing, from the input property value and the input property
financing amount, a quantity of mortgage insurance coverage required
to satisfy a Shariah board-determined Shariah-compliant credit
enhancement; and
producing, responsive to the quantity, output which is used for
securing a mortgage insurer's commitment to an intermediary to
insure a home financing contract, wherein said intermediary is not a
lender or borrower.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Gould

US 5,966,700 Oct. 12, 1999

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Feb. 28, 2011) and Reply Brief (“Reply Br.,” filed May 31, 2011),
and the Examiner’s Answer (“Ans.,” mailed Mar. 31, 2011).
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The following rejections are before us for review:
1. Claims 1-27 are 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 applicants regard as the invention.
2. Claims 1-27 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Gould.

ISSUES
Does the use of the term “Shariah” render the claims indefinite under
¶2 of §112?
Does Gould’s failure to disclose “computing ... a quantity… required
to satisfy a Shariah board-determined Shariah-compliant credit
enhancement....” render the claims patentably unobvious over Gould?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer (Ans.
4-14). Additional findings of fact may appear in the Analysis below.

ANALYSIS
The rejection of claims 1-27 under 35 U.S.C. §112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicants regard as the invention.
The claims are rejected as indefinite for using the word “Shariah,”
which the Examiner finds causes the “claim scope [to be] uncertain.” Ans. 4.
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We will reverse the rejection.
The test for definiteness is whether one skilled in the art would
understand the bounds of the claim when read in light of the specification.
“The degree of precision necessary for adequate claims is a function of the
nature of the subject matter.” Miles Labs. Inc. v. Shandon Inc., 997 F.2d 870,
875 (Fed. Cir. 1993).
Here the claimed subject matter is drawn to an “[a]pparatus,
including: an originator computer programmed to carry out the operations
of: receiving [information A]; computing [information B from information
A]; and producing [information C from information B]” (claims 1-26) and a
method using a computer to do the same (claim 27). A term describing the
particular content of information A, B, and C would be considered
nonfunctional descriptive material and as such would not be viewed as
adding patentable significance to the claimed subject matter.
The term “Shariah” is just such a term. It is attached to the particular
content of information B; that is, it is a descriptive term for the information
to be computed (i.e., “a quantity of mortgage insurance coverage required to
satisfy a Shariah board-determined Shariah-compliant credit enhancement”
(claim 1)). As such, “Shariah” is a term best characterized as being
nonfunctional descriptive material. And, as such, the term “Shariah” is not
patentably significant to the claimed subject matter.
It follows that, if the term “Shariah” carries no patentable
significance, then the presence (or absence) of the term “Shariah” in the
claims has no effect on their scope. If the scope of the claims is not affected
by the presence or absence of the term “Shariah,” then the inclusion of term
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“Shariah” in the claims cannot cause the claims to be indefinite.
The rejection is reversed.

The rejection of claims 1-27 under 35 U.S.C. §103(a) as being unpatentable
over Gould.
On the issue of whether Gould’s failure to disclose “computing ... a
quantity… required to satisfy a Shariah board-determined Shariah-compliant
credit enhancement....” renders the claims patentably unobvious over Gould,
the Appellants argued claims 1-27 as a group (App. Br. 19-27). We select
claim 1 as the representative claim for this group, and the remaining claims
2-27 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2007).
The Examiner found all the claim limitations of claim 1 disclosed in
Gould but for the claim phrase “required to satisfy a Shariah board-
determined Shariah-compliant credit enhancement” Ans. 6. However,
according to the Examiner, “Gould does disclose that the amount of credit
enhancement is determined by a "funding institution" after examining
historic credit losses incurred by the mortgage originator.” Ans. 6. The
Examiner found that “it would be obvious to one of ordinary skill in the art
at the time of the invention to modify Gould to determine a credit
enhancement amount as determined by body other than the funding
institution [e.g., a Shariah board] merely as a matter of design choice.” Ans.
6.
The Appellants first argue that Gould fails to disclose “computing ... a
quantity… required to satisfy a Shariah board-determined Shariah-compliant
credit enhancement....”App. Br. 19-20. The Appellants next argue that
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associating Gould’s funding institution with a Sharia Board is hindsight
reconstruction. App. Br. 20-21. The Appellants next argue that Gould’s
funding institution involves interest which contradicts the notion of a
Shariah Board which would prohibit interest. App. Br. 21. The Appellants
next argue that the aforementioned contradiction is a teaching away from
said claim “computing ... a quantity… required to satisfy a Shariah board-
determined Shariah-compliant credit enhancement....” App. Br. 22. The
Appellants next argue that modifying Gould's teaching of the intended
function of the financial institution to give interest so as not to give interest
as a Shariah Board would do would destroy it. App. Br. 22. The Appellants
next argue that the Examiner impermissibly used Official Notice to find
substituting Gould’s financial institution with a Shariah Board obvious. App.
Br. 22-24. The Appellants next challenge the Examiner’s assertion that
substituting Gould’s financial institution with a Shariah Board “could be
performed readily and easily by any person of ordinary skill in the art, with
neither undue experimentation nor risk of unexpected results”. App. Br. 24-
25. The Appellants next argue that they are entitled to information
establishing that the arguments mentioned above are persuasive as to
patentability. App. Br. 26-27.
None of the arguments persuade us as to error in the rejection.
The Examiner found all the limitations in claim 1 disclosed in Gould
but for the claim phrase “required to satisfy a Shariah board-determined
Shariah-compliant credit enhancement” Ans. 6. Accordingly, the Examiner
found
• an originator computer; (see at least Gould column 2 line 21 - 24);
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• entering a property value and a property financing amount as input
to a computer; (see at least Gould column 2 line 29 - 32);
• computing, from the property value and a property financing
amount, a quantity of mortgage insurance coverage required to satisfy
a credit enhancement; (see at least Gould column 2 line 34 - 36;
column 3 line 40 - 43 and column 4 line 3 - 25);
• securing a mortgage insurer's commitment to an intermediary to
insure a home financing contract, wherein said intermediary is not a
lender or borrower; (see at least Gould column 2 line 36 - 40 and
column 4 line 3 - 25).
Ans. 5-6. The Appellants have not disputed these findings and accordingly
we take them as accepted.
The only issue is whether Gould’s failure to disclose “computing ... a
quantity… required to satisfy a Shariah board-determined Shariah-compliant
credit enhancement....” render the claims patentably unobvious over Gould.
Actually, it is accepted that Gould discloses a computer that computes a
quantity. It is the value of that quantity, in other words, the content of the
information computed, that is at issue here and not any structure or function
of the computer. The claimed and Gould computers appear to function
exactly the same way – they both compute and both take information and
compute a quantity. If there is a structural/functional difference between the
two apparatuses, it is not apparent. Cf. Hewlett-Packard Co. v. Bausch &
Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990) (“apparatus claims cover
what a device is, not what a device does”).
The difference between Gould’s credit enhancement value (col. 2, l.
35) and a quantity “required to satisfy a Shariah board-determined Shariah-
compliant credit enhancement” (claim 1) is a difference in the type of
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information having been computed. Patentable weight need not be given to
descriptive material absent a new and unobvious functional relationship
between the descriptive material and the substrate. See In re Lowry, 32 F.3d
1579, 1582-83 (Fed. Cir. 1994); In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir.
2004). In that regard, the Appellants have not come forward with evidence
sufficient to show that the structure of the claimed system is functionally
affected by having computed a quantity “required to satisfy a Shariah board-
determined Shariah-compliant credit enhancement” as opposed to having
computed a quantity corresponding to a credit enhancement value as
disclosed in Gould. Absent such evidence, it is reasonable to conclude that
the claim recitation “required to satisfy a Shariah board-determined Shariah-
compliant credit enhancement” attached to claim limitation of computing a
quantity is descriptive and not functionally related to any structure of the
claimed system. As such it falls under the category of patentably
inconsequential subject matter. See Ex parte Curry, 84 USPQ2d 1272, 1275
(BPAI 2005) (informative).
Common situations involving nonfunctional descriptive material are:
- a computer-readable storage medium that differs from the prior art
solely with respect to nonfunctional descriptive material, such as
music or a literary work, encoded on the medium,
- a computer that differs from the prior art solely with respect to
nonfunctional descriptive material that cannot alter how the machine
functions (i.e., the descriptive material does not reconfigure the
computer), or
- a process that differs from the prior art only with respect to
nonfunctional descriptive material that cannot alter how the process
steps are to be performed to achieve the utility of the invention.
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Thus, if the prior art suggests storing a song on a disk, merely
choosing a particular song to store on the disk would be presumed to
be well within the level of ordinary skill in the art at the time the
invention was made. The difference between the prior art and the
claimed invention is simply a rearrangement of nonfunctional
descriptive material.
See also Ex parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005)
(informative). Nonfunctional descriptive material cannot render nonobvious
an invention that would have otherwise been obvious. In re Ngai, 367 F.3d
at 1339. Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983) (when
descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability).
Accordingly we are not persuaded as to error in the rejection of claim
1, and claims 2-27 which stand or fall with claim 1, on the grounds that
Gould fails to disclose “computing ... a quantity… required to satisfy a
Shariah board-determined Shariah-compliant credit enhancement....”as the
Appellants have argued.

Claims 2, 6, and 13-26
Each of claims 2, 6, and 13-26 is separately argued. App. Br. 28-62.
The Appellants concede that the same arguments are made in challenging
the rejection of each of these claims. (“Applicant apologizes for the
repetitious arguments for each of the claims....” (App. Br. 27)). Those
arguments are the same ones addressed above with respect to claim 1. The
difference is that, with respect to these claims, the challenge does not focus
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on any particular limitation or address any particular finding made by the
Examiner. They make general assertions that “[t]he rejections must be in
error because there is no disclosure of a claim element” (e.g., App. Br. 29
regarding the rejection of claim 2) and then list common arguments used to
challenge findings of obviousness (e.g., “the modification would
contradict the explicit teachings of the base reference” (App. Br. 29)).
In effect, the Appellants have made arguments with respect to these
claims which simply state, in whole or in part, that the references do not
disclose or suggest certain claimed features – without responding to the
Examiner’s reasoning in establishing a prima facie case of obviousness. “It
is not the function of this court to examine the claims in greater detail than
argued by an appellant, looking for nonobvious distinctions over the prior
art.” In re Baxter Travenol Labs, 952 F.2d 388, 391 (Fed. Cir. 1991). See
also In re Wiseman, 596 F.2d 1019, 1022 (CCPA 1979) (arguments must
first be presented to the Board). A general allegation that the art does not
teach any of the claim limitations is no more than merely pointing out the
claim limitations. A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim. 37
C.F.R. § 41.37(c)(1)(vii).

For the foregoing reasons, the rejection of claims 1-27 under §103
over Gould is sustained.

CONCLUSIONS
The rejection of claims 1-27 under 35 U.S.C. §112, second paragraph,
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as being indefinite for failing to particularly point out and distinctly claim
the subject matter which applicants regard as the invention is reversed.
The rejection of claims 1-27 under 35 U.S.C. §103(a) as being
unpatentable over Gould is affirmed.

DECISION
The decision of the Examiner to reject claims 1-27 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED

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