Ex Parte Hill et al

Board of Patent Appeals and Interferences

Sep 22, 2010

11057115 (B.P.A.I. Sep. 22, 2010)

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.
11/057,115 02/11/2005 Bernard C. Hill 1224.002US1 1702
7590 09/23/2010
Mark A. Litman & Associates, P.A.
York Business Center, Suite 205
3209 West 76th St.
Edina, MN 55435
EXAMINER
MONFELDT, SARAH M
ART UNIT PAPER NUMBER
3684
MAIL DATE DELIVERY MODE
09/23/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BERNARD C. HILL and
DAVID L. CASPER
___________

Appeal 2009-012902
Application 11/057,115
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-012902
Application 11/057,115

2
STATEMENT OF THE CASE
Bernard C. Hill and David L. Casper (Appellants) seek our review
under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-18. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM-IN-PART. 2

THE INVENTION
This invention is an on-line service for assisting in foreclosure.
Specification 1:12-14.
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A foreclosure real estate coordination system
for coordinating data and providing information to
an external subscriber to the system, the data and
information relating to at least one foreclosure real
estate transaction, said system comprising: (a) a
centralized transaction coordination system for
accessing a foreclosure real estate transaction
database; (b) at least one interface device for
accessing said foreclosure real estate transaction
coordination system, each interface device
associated with a party to said foreclosure real
estate transaction; (c) information relevant to said
foreclosure real estate transaction being provided

2 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Dec. 3, 2008) and the Examiner’s Answer (“Answer,” mailed Dec. 8,
2008).

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directly to said transaction coordination system by
at least one information originating party
originating said information; (d) said information
being stored in said transaction database; and (e)
said information being accessible by at least one
party having registered access to said foreclosure
real estate transaction database using said at least
one interface device to access said transaction
coordination system, the system comprising
software enabling the creation and transmission of
jurisdictionally required notice of a foreclosure
based upon information input to the data base by
authorized sources.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Sullivan
Cleary
Frost
Deane
US 2002/0103669 A1
US 2003/0144948 A1
US 2004/0044696 A1
US 2004/0243507 A1
Aug. 1, 2002
Jul. 31, 2003
Mar. 4, 2004
Dec. 2, 2004

The following rejections3 are before us for review:
1. Claims 1-4 and 8 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Sullivan and Cleary.
2. Claims 5-6 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Sullivan, Cleary, and Deane.

3 The Appellants also traverse the Examiner’s objection to claim 8. Br. 11.
However, this objection is a petitionable matter and not an appealable
matter, and, therefore, we will not address it. See In re Hengehold, 440 F.2d
1395, 1403-4 (CCPA 1971).
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3. Claims 7 and 9-12 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Sullivan, Cleary, and Frost.
4. Claims 13-18 are rejected under 35 U.S.C. §103(a) for the
identical reasons above.

ISSUES
The first issue is whether claims 1-4 and 8 are unpatentable under 35
U.S.C. § 103(a) over Sullivan and Cleary. Specifically, the issue is whether
the combination of Sullivan and Cleary teaches: 1) a foreclosure real estate
coordinating system having information related to a foreclosure real estate
transaction and 2) software enabling the creation and transmission of
jurisdictionally required notices of foreclosure based upon information
inputted to the database by authorized sources. The rejection of claims 5-6
under 35 U.S.C. § 103(a) over Sullivan, Cleary, and Deane and the rejection
of claims 13-18 under 35 U.S.C. § 103(a) also turn on this issue.
The second issue is whether claims 7 and 9 are unpatentable under 35
U.S.C. § 103(a) over Sullivan, Cleary, and Frost. Specifically, the issue is
whether the combination of Sullivan, Cleary, and Frost teaches a database
that can be modified and search only by government authorities and a
system administrator to indicate a change in legal status of real property or
foreclosed real property already in the database.
The third issue is whether claims 10-12 are unpatentable under 35
U.S.C. § 103(a) over Sullivan, Cleary, and Frost. Specifically, the issue is
whether the combination of Sullivan, Cleary, and Frost teaches that access to
the database is limited by member class in a subscription.

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FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
Sullivan
1. Sullivan describes a “transaction coordination system for directing
the flow of information appurtenant to a real estate transaction.”
Sullivan [0014].
2. Sullivan states that there are numerous types of real estate
transaction, including “trustee sales (e.g. sales occurring due to the
foreclosure of a property.” Sullivan [0005].
3. Sullivan states: “Exemplary parties that may use the present
invention include, but are not limited to buyers, sellers, real estate
agents, real estate brokers, real estate agent support staff, escrow
company, title company, lending institution, attorneys, government
entities, engineers, and any of the vendors set forth in this
specification.” Sullivan [0027].
4. Sullivan discloses assigning various level of user access to parties
of the transaction and that parties may only access portions for
which they have clearance. See Sullivan [0016], [0031], [0038],
and [0039].
5. Sullivan describes that each user must be associated with a user
type. Sullivan [0063] and [0066].
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6. Sullivan in Figures 4-9 depicts representative information that can
be accessed by different parties, such as real estate agents, brokers,
consumers. Sullivan [0021] – [0026].
7. Sullivan describes a government access screen. Sullivan Claim 10.
Cleary
8. Cleary describes a system that automates the reporting of mortgage
loan delinquency status. Cleary [0001].
9. Cleary states:
In cases in which it appears that the delinquency
cannot be cured, learning of the delinquency helps
the mortgage insurer act to mitigate potential
losses. Such prompt action may reduce the time
during which the property may deteriorate in
condition and value due to neglect by the borrower
and may reduce other expenses resulting from a
delay in foreclosure of the mortgage. Prompt
notice of a delinquency and appropriate action by
the mortgage insurer may increase the amount
recovered at a foreclosure sale, reducing losses on
the mortgage insurance policy.
Cleary [0003].
10. Cleary describes that the delinquency information manager
provides information, such as a mortgage insurance certificate,
borrower identifying information, principal amount, amount of
delinquency, loan due date, etc. (see Cleary [0022]), to a mortgage
information database 112. Cleary [0020].
11. Cleary states:
Once the information has been stored in the
mortgage information database 112, it is accessible
to authorized persons having responsibility for
dealing with mortgage insurance issues relating to
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the mortgages concerning which the information
was received . . . these persons can be made aware
of the status of the delinquent mortgages and,
where appropriate, can use the status information
to make decisions about which actions to take in
order to resolve the delinquency.
Cleary [0030].
Frost
12. Frost describes a system for facilitating a real estate transaction.
Frost Abstract.
13. Frost describes various types of access accounts, such as individual
member, group member, guest member, and service provider.
Frost [0061] – [0074].
14. Frost states:
Accordingly, the government entity preferably
provides content regarding the laws, ordinances,
and regulations via the website 410, which content
may be added to a property file 130. This
automated process reduces the amount of resources
the governmental entity spends in responding to
requests for property-related laws, ordinances, and
regulations.
Frost [0135].

ANALYSIS
The rejection of claims 1-4 and 8 under 35 U.S.C. §103(a) as being
unpatentable over Sullivan and Cleary.
The issue is whether the combination of Sullivan and Cleary teaches:
1) a foreclosure real estate coordinating system having information relevant
to a foreclosure real estate transaction and 2) software enabling the creation
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and transmission of jurisdictionally required notices of foreclosure based
upon information inputted into the database by authorized sources.
First, we turn to whether combination of Sullivan and Cleary teaches a
foreclosure real estate coordinating system having information relevant to a
foreclosure real estate transaction. The Appellants argue that Sullivan does
not teach the subject matter of claim 1 related to a foreclosure transaction.
Br. 9-12. The Appellants state that “the system of Sullivan is not direct to,
nor includes, the substantive business and operational foreclosure content of
the subject matter of claim 1. Br. 11 (Emphasis original).
However, we find the claim 1 is broader in scope then the Appellants’
argument. Claim 1 recites “a foreclosure real estate coordination system”
and “data and information relating to at least one foreclosure real estate
transaction.” The claim broadly recites “a foreclosure real estate
transaction” and does not seem to be limited just the act of foreclosing on a
property. The Examiner seems to have broadly construed this limitation to
encompass foreclosure related real estate transactions, such as the sale of
foreclosed real estate because the Examiner found that Sullivan taught this
limitation in paragraph [0005] (Answer 5). Sullivan describes, in paragraph
[0005], that a type of real estate transaction is a sale that occurs due to the
foreclosure of a property. FF 2. We note that the Appellants do not
challenge the reasonableness of the Examiner’s construction but merely
argues that Sullivan is not direct to foreclosures. See Br. 9-12. Accordingly,
we are not persuaded by the Appellants’ argument.
Next, we turn to whether Sullivan and Cleary disclose “software
enabling the creation and transmission of jurisdictionally required notices of
a foreclosure based upon information input to the database by authorized
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sources,” which is recited in claim 1. The Appellants argue that neither
Sullivan nor Cleary disclose this limitation. Br. 11-12. The Appellants
state: “Additionally, there are no requirements for jurisdictional
requirements, compliance or the like, which is an essential basis for
consideration of the merits of a transaction.” Br. 11. The Examiner relies
upon Cleary’s paragraphs [0021]-[0023] and [0031] to teach this limitation
(Answer 6) and asserts that Cleary describes a delinquency reporting system
having delinquency information (Answer 29).
In as much as the Appellants may be arguing that claim 1 require
software that creates and transmits jurisdictionally require notices of
foreclosure (Br. 11-12), we first find that the scope of claim 1 is broader.
Claim 1 requires software that enables the creation and transmission of
jurisdictionally required notices of foreclosure. The software is not required
to actually create and transmit the jurisdictionally required notice of
foreclosure. Cleary in paragraphs [0021]-[0023] and [0031] describes a
delinquency reporting system that contains delinquency information. This
reporting system contains software that would enable a person to create and
transmit the notice by providing them with the delinquency information. See
FF 9-11.
Accordingly, we find that the Appellants have not overcome the
rejection of claims 1-4 and 8 under 35 U.S.C. §103(a) as being unpatentable
over Sullivan and Cleary.

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The rejection of claims 5-6 under 35 U.S.C. §103(a) as being unpatentable
over Sullivan, Cleary, and Deane.
We also shall sustain the standing 35 U.S.C. § 103(a) rejection of
dependent claims 5 and 6 as being unpatentable over Sullivan, Cleary, and
Deane since the Appellants have not challenged such with any reasonable
specificity (see App. Br. 12-13), thereby allowing claims 5 and 6 to stand or
fall with parent claim 1 (see In re Nielson, 816 F.2d 1567, 1572 (Fed. Cir.
1987)).

The rejection of claims 7 and 9-12 under 35 U.S.C. §103(a) as being
unpatentable over Sullivan, Cleary, and Frost.
Claims 7, 9, 11, and 12
Claims 7 and 9 each recite “a data base that can be modified and
search only by government authorities and a system administrator to indicate
a change in legal status of real property or foreclosed real property already in
the data base.” The Appellants argue that Frost does not teach allowing only
government authorities and a system administer to indicate a change in legal
status of real property or foreclosed real property already in the data base.
Br. 13-14.
The Examiner found that Frost taught “a database that can be
modified and searched only by government authorities” in paragraph [0135].
Answer 11. The Examiner concludes that it would have been obvious to
“expand the system of Sullivan, Sr. et al. to include a governmental entity
that creates a service provider account for the website 410 as taught by
Frost” and found that one would be motivated to do so “since this automated
process reduces the amount of resources that governmental entity spends in
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responding to request for property –related laws, ordinances, and
regulations.” Answer 11.
While we agree with the Examiner that Frost teaches that
governmental agencies can use the system and that a user’s access can be
restricted (FF 13-14), the cited paragraphs of Frost do not teach a database
that is structured so that it can be modified and searched only by
government authorities and a system administrator to indicate a change in
legal status of real property or foreclosed real property already in the data
base. Cf. In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997)
(functional language does not confer patentability if prior art structure has
capability of functioning in the same manner). We note that the Examiner
does not provide any other explanation as to whether one of ordinary skill
in the art would have been led to this limitation other then that above.
Accordingly, we find that the Appellants have overcome the rejection
of claims 7 and 9, and claims 11 and 12, dependent thereon, under 35 U.S.C.
§ 103(a) as being unpatentable over Sullivan, Cleary, and Frost.

Claim 10
The Appellants argue that Frost does not teach the limitation recited in
claim 10. Br. 14. The Appellant argues:
To the contrary, these claims allow access to the
entire data base (all files on all properties)
according to a class of subscription to the system.
This limitation is not suggested by the art, and is
contrary to the teachings of the art. Frost intends
for individual property files to be individually and
distinctively controlled by participants on that
property file. Frost does not suggest an open
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database with different classes of subscription
having uniform access to all property files.
Id.
First, we find no requirement in claim 10 for an “open database” that
has “uniform access to all property files.” Claim 10 merely broadly requires
that the “access to the data base is limited by member class in a
subscription.” The Examiner found that Frost taught this limitation in
paragraphs [0061]-[0076] (Answer 12), and we agree. See FF 13. Further,
we note that Sullivan also describes that access to the coordination system is
restricted by user type. FF 3-7.
Accordingly, we find that the Appellants have not overcome the
rejection of claim 10 under 35 U.S.C. § 103(a) as being unpatentable over
Sullivan, Cleary, and Frost.

The rejection of claims 13-18 under 35 U.S.C. § 103(a).
The Appellants traverse the rejection of claim 13-18 by relying upon
the reasons used to traverse the rejection of claim 1 above. Br. 14-15. As
discussed above, we found that argument unpersuasive. Further, the
Appellants merely assert that limitations from claims 13 and 17 are not
taught by the cited prior art. Br. 15. 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). A general allegation
that the art does not teach any of the claim limitations is no more than
merely pointing out the claim limitations.
Accordingly, we find that the Appellants have not overcome the
rejection of claims 13-18 under 35 U.S.C. § 103(a).
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DECISION
The decision of the Examiner to reject claims 1-6, 8, 10, and 13-18 is
affirmed and to reject claims 7, 9, 11, and 12 is 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

mev

MARK A. LITMAN & ASSOCIATES, P.A.
YORK BUSINESS CENTER, SUITE 205
3209 WEST 76TH ST.
EDINA MN 55435