Ex Parte Lazerson

Board of Patent Appeals and Interferences

Oct 6, 2009

10139418 (B.P.A.I. Oct. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________
Ex parte JEFFREY M. LAZERSON
____________________
Appeal 2009-005466
Application 10/139,418
Technology Center 3600
____________________
Decided: October 07, 2009
____________________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
KEVIN F. TURNER Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-005466
Application 10/139,418

2

STATEMENT OF CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Final
Rejections of claims 58-71. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION
We AFFIRM-IN-PART1.

THE INVENTION
Appellant’s claimed invention relates to a method of assisting a
borrower in obtaining a loan. The borrower is able to assess its borrowing
ability based on a credit grade and then if the borrower qualifies, select a
lender for providing the loan without exposing any personal information to
any of the lenders. (Claim 58).
Independent claim 58, which is deemed to be representative, reads as
follows:
58. A method of assisting a borrower in obtaining
a loan, the method comprising:
(a) receiving, over a network, personal information
of a borrower, said personal information including
financial information of the borrower, and including
information regarding objectives of the borrower in
seeking a loan, said personal information obtained, at
least in part, via an online form completed by the
borrower;

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed May 2, 2008) and Reply Brief (“Reply Br.,” filed Aug. 13, 2008),
and the Examiner’s Answer (“Ans.,” mailed Jun. 17, 2008).
Appeal 2009-005466
Application 10/139,418

3
(b) selecting, based on said information regarding
objectives of the borrower, underwriting criteria to be
used to generate a credit grading for the borrower;
(c) programmatically generating the credit grading
for the borrower using the selected underwriting criteria,
wherein the selected underwriting criteria includes
objective criteria used by one or more lenders capable of
providing the loan;
(d) outputting information regarding the credit
grading, and information regarding a plurality of lenders
capable of providing the loan, to the borrower; and
(e) subsequently to steps (a)-(d), in response to
receiving authorization from the borrower, sending the
credit grading and at least some of the personal
information of the borrower to a particular one of said
lenders selected by the borrower;
wherein steps (a)-(e) are performed by a third party
evaluator that does not provide the loan, and is performed
such that none of the received personal information of the
borrower is released to any of the lenders without
specific authorization from the borrower, whereby the
method enables the borrower to assess its borrowing
ability and to select a lender for providing the loan
without exposing any personal information to any of the
lenders.

THE REJECTION
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Tengel, et. al. (“Tengel”) 5,940,812 Aug. 17, 1999
Cunningham 6,014,645 Jan. 11, 2000
Hillestad, et. al. (“Hillestad”) US 2003/0208412 A1 Nov. 6, 2003

LoansDirect Advances Online Lending Technology with the Industry's
First 100% Online Mortgage, Business Editors and High-Tech Writers,
Business Wire (New York), Feb. 17, 2000, p. 1 (“LoansDirect”).
Appeal 2009-005466
Application 10/139,418

4
The Examiner rejected claims 58, 61-63, and 66-71 under 35 U.S.C.
§ 103(a) as being unpatentable over Cunningham and Hillestad. Further, the
Examiner rejected claims 59 and 60 under 35 U.S.C. § 103(a) as being
unpatentable over Cunningham, Hillestad, and Tengel. Additionally, the
Examiner rejected claims 64 and 65 under 35 U.S.C. § 103(a) as being
unpatentable over Cunningham, Hillestad, and LoansDirect. Lastly, the
Examiner made an alternative rejection and rejected claims 58 and 59 under
35 U.S.C. § 103(a) as being unpatentable over Cunningham, Tengel, and
Hillestad.
Rather than repeat the arguments of Appellant or Examiner, we make
reference to the Briefs and the Answer for their respective details. Only
those arguments actually made by Appellant have been considered in this
decision. Arguments that Appellant did not make in the Briefs have not
been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(vii).

ISSUES
1. Has Appellant shown that Examiner erred in rejecting claims 58,
61-63, and 66-71 under 35 U.S.C. § 103(a) as being obvious over
Cunningham and Hillestad?
2. Has Appellant shown that Examiner erred in rejecting claims 59
and 60 under 35 U.S.C. § 103(a) as being obvious over Cunningham,
Hillestad, and Tengel?
3. Has Appellant shown that Examiner erred in rejecting claims 64
and 65 under 35 U.S.C. § 103(a) as being obvious over Cunningham,
Hillestad, and LoansDirect?
Appeal 2009-005466
Application 10/139,418

5
4. Has Appellant shown that Examiner erred in rejecting claims 58
and 59 under 35 U.S.C. § 103(a) as being obvious over Cunningham,
Tengel, and Hillestad?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by at least a
preponderance of the evidence. In re Caveney, 761 F.2d 671, 674 (Fed. Cir.
1985) (explaining the general evidentiary standard for proceedings before
the Office).
1. Cunningham is directed to a real-time financial card application
system for presenting financial card offers to potential customers. (Abs.).
2. Cunningham discloses that when applying online for a financial
card, a user completes an application which includes personal and financial
information. The application data include applicant's name, telephone
number, home address, e-mail address, income, other assets and liabilities,
bank account numbers, etc. (col. 1, ll. 1-2 and col. 4, ll. 8-16).
3. Hillestad is directed towards a system which facilitates transactions
between a buyer of credit (Member) and a seller of credit (Lender).
(¶ [0030]).
4. Hillestad discloses that when a lender searches for potential credit
requests (potential borrowers) to make a loan to, they are able to search
using stopped filters. These stopped filters search the anonymous credit
requests completed by the potential borrowers and include the type of loan
they require. (¶ [0009]).
5. Hillestad discloses, inter alia, that filter attributes which can be
searched as stopped filters include, whether a credit request (loan) is an auto
Appeal 2009-005466
Application 10/139,418

6
loan or a mortgage. Additionally, if the loan is for a mortgage, the mortgage
is further defined as either “Preferred”, “Sub-Prime”, “Non-Conforming”, or
“Vacation Home.” (Fig. 14).
6. Cunningham discloses, “[a] ’grading system‘ process 48 may be
employed which uses the application data, as well as other data, as input to
determine which financial card offers may be presented to the applicant.”
(col. 4, ll. 17-20).
7. This “grading system” disclosed by Cunningham, assigns a grade to
the borrower by using the application data and other information such as
credit bureau data. (col. 4, ll. 20-23).
8. Appellant’s Specification describes “underwriting criteria” to
include “[o]ne or more, and preferably all, of the credit history, credit
score(s), equity, down payment, income, assets, job history and stability. . .”
(¶ [0022]).
9. Cunningham discloses that an applicant provides personal and
financial data information which is analyzed in conjunction with credit
scores to determine a financial risk rating for the applicant which is then
used by the system to determine qualifying credit offers for the applicant.
(Abs).
10. Tengel is directed to a loan origination system and method which
automatically matches the best available loan to a potential borrower. (Abs).
11. Tengel discloses that that the lender’s server terminal is connected
to a credit bureau interface which allows the lender to process credit bureau
data. (col. 5, ll. 3-11).
12. LoansDirect is an article describing LoansDirect Inc., an online
consumer direct mortgage lender. (p. 1).
Appeal 2009-005466
Application 10/139,418

7
13. LoansDirect describes MyLoanAccount, a feature which allows
users to visit an online site and access all the information associated with
their account. (p.2).
14. LoansDirect describes obtaining online loan approval. (p. 1).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, (3)
the level of skill in the art, and (4) where in evidence, so-called secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See
also KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”)
In KSR, the Supreme Court held that “[the] combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR, 550 U.S. at 401. The Court
explained:
When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
Appeal 2009-005466
Application 10/139,418

8
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 417.
The operative question in this “functional approach” is thus “whether
the improvement is more than the predictable use of prior art elements
according to their established functions.” Id. In rejecting claims under 35
U.S.C. § 103(a), the examiner bears the initial burden of establishing a prima
facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). See also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). Only
if this initial burden is met does the burden of coming forward with evidence
or argument shift to the Appellants. In re Oetiker, 977 F.2d at 1445. See
also In re Piasecki, 745 F.2d at 1472. Obviousness is then determined on
the basis of the evidence as a whole and the relative persuasiveness of the
arguments. See Oetiker, 977 F.2d at 1445; see also In re Piasecki, 745 F.2d
at 1472.
Appeal 2009-005466
Application 10/139,418

9
ANALYSIS
ISSUE 1

Claims 58, 61-63, and 66-71 under 35 U.S.C. § 103(a) as being obvious
over Cunningham and Hillestad.
Claim 58
Appellant argues that the combination of Cunningham and Hillestad,
“do[es] not collectively teach or suggest the following portion of the claim:
‘(a) receiving, over a network, personal information of a borrower, said
personal information . . . including information regarding objectives of the
borrower in seeking a loan.’” (App. Br. 5). We are not persuaded by
Appellant’s arguments and we agree with the Examiner’s findings that
Cunningham discloses “receiving, over a network, personal information of a
borrower, said personal information . . . including information regarding
objectives of the borrower in seeking a loan[.]” (Ans. 3 and 13-14).
Cunningham discloses receiving over a network, personal information of a
borrower. (FF 2). While we don’t agree with the Examiner that it would be
inherent that this personal information would “. . . includ[e] information
regarding objectives in seeking a loan”, we do believe it to be implied. As
stated by the Examiner, there does not seem to be a reason why one wishing
to apply for a new financial card would not have an objective. (Ans. 13-14).
Since Appellant’s independent claim does not specify the type of loan it
seeks to assist a borrower in obtaining, a borrower’s choice between a credit
card or a debit card could be construed as information regarding the
objectives of the borrower in seeking a loan.
Appeal 2009-005466
Application 10/139,418

10
Even assuming that Cunningham does not explicitly disclose “. . .
including information regarding objectives of the borrower in seeking a
loan,” a person of ordinary skill in the art would appreciate from a reading of
Cunningham and Hillestad, that when receiving personal information from a
potential borrower, this personal information may include information
regarding the objectives of the borrower when seeking the loan. (FF 4, 5, 6).
As disclosed in Hillestad a potential lender is able to search for a potential
borrower using such search criteria as mortgage type. (FF 6). Thus, a
person of ordinary skill in the art would have known this from Hillestad and
applied this technique to Cunningham when receiving personal information
from a borrower, that this information includes information regarding the
objectives of the borrower. Therefore, Appellant’s argument is not
persuasive as to error in the rejection.
Further, Appellant argues that the combination of Cunningham and
Hillestad, “. . . do not collectively teach or suggest: ‘(b) selecting, based on
said information regarding objectives of the borrower, underwriting criteria
to be used to generate a credit grading for the borrower; [and] (c)
programmatically generating the credit grading for the borrower using the
selected underwriting criteria.’” (App. Br. 6). We disagree with Appellant
and agree with the Examiner that Cunningham does indeed select
underwriting criteria to be used to generate a credit grade for the borrower.
(Ans. 3-4 and 14-16). Cunningham discloses a “grading system” which
generates a credit grade for a potential borrower based on application data
and credit bureau data. (FF 6, 7). The application data disclosed in
Cunningham include, inter alia, income, assets, liabilities, and credit bureau
data. We find this to be commensurate with the scope of “underwriting
Appeal 2009-005466
Application 10/139,418

11
criteria” as described in Appellant’s Specification, and thus discloses
selecting underwriting criteria and subsequently generating a credit grading
for the borrower based on this underwriting criteria as claimed by Appellant.
(FF 2, 8). Accordingly, Appellant’s argument is not persuasive as to error in
the rejection.
Additionally, Appellant argues “Cunningham's system does not
provide a mechanism for selecting or varying the criteria used for grading
the financial card applicants.” (App. Br. 6). Specifically, Appellant argues
that even though claim 58 does not recite a step which varies the criteria
used for generating a credit grade, “[it] is inherent in the recited claim
language at issue.” (Reply Br. 3). We disagree with Appellant’s argument
and find the claim language to recite, “selecting, based on said information
regarding objectives of the borrower, underwriting criteria to be used to
generate a credit grading for the borrower.” (App. Br. 15). As discussed
supra, Cunningham discloses this step. Further, contrary to Appellant’s
argument that varying criteria is inherent within selecting criteria, we see no
basis to support this assertion. Although it may have been the intent of
Appellant to vary the criteria used for grading applicants, neither the claim
nor the principles of inherency require the step. Thus, we find the
combination of Cunningham and Hillestad makes obvious claim 58.
Therefore, Appellant’s argument is not persuasive as to error in the rejection.

Claims 61-63 and 69-71
Appeal 2009-005466
Application 10/139,418

12
Appellant does not separately argue claims 61-63 and 69-71 and so
has not sustained their burden of showing that the Examiner erred in
rejecting claims 61-63 and 69-71 under 35 U.S.C. § 103(a) as unpatentable
over Cunningham and Hillestad and for the same reasons we found as to
claim 58, supra.

Dependent claim 66 under 35 U.S.C. § 103(a) as being obvious over
Cunningham and Hillestad.
Appellant argues that the combination of Cunningham and Hillestad
does not disclose “. . . outputting information to the borrower regarding
specific loans offered by said lenders.” (App. Br. 7). We are not persuaded
by Appellant’s argument and agree with the Examiner that Cunningham
discloses outputting information to the borrower regarding specific loans
offered by said lenders. (FF 9). Albeit, Cunningham refers to outputting
credit offer information rather than outputting loan information, we find
under the broadest reasonable interpretation a credit offer to be equivalent to
a loan. Accordingly, Appellant’s argument is not persuasive as to error in
the rejection.

Dependent claim 67 under 35 U.S.C. § 103(a) as being obvious over
Cunningham and Hillestad.
Appellant argues that the combination of Cunningham and Hillestad
does not disclose “. . . wherein the information about specific loans
comprises an indication of an amount a lender is paying for money
associated with a loan.” (App. Br. 7). The Examiner responds, “. . . that the
amount of money a lender is paying for money associated with a loan is to
Appeal 2009-005466
Application 10/139,418

13
be in compliance with the regulation and is required as per HUD statement
in the real estate loan processing.” (Ans. 17). We disagree with Examiner
and find Appellant’s arguments to be compelling.
While the Examiner may be correct that the amount a lender is paying
for money associated with a loan is disclosed on a HUD statement, this
information would not necessarily be information outputted per the
limitation of claim 66 which “output[es] information to the borrower
regarding specific loans offered by said lenders.” (App. Br. 16). Therefore,
we find the Examiner has erred in finding that Cunningham and Hillestad
makes obvious the limitation “. . . wherein the information about specific
loans comprises an indication of an amount a lender is paying for money
associated with a loan.” Accordingly, we do not sustain the Examiner's
rejection of claim 67 as rejected under 35 U.S.C. § 103(a) as being obvious
over Cunningham and Hillestad.

Dependent claim 68 under 35 U.S.C. § 103(a) as being obvious over
Cunningham and Hillestad.
Appellant argues that the combination of Cunningham and Hillestad
does not disclose “wherein the method comprises the third party evaluator
selecting and applying the underwriting criteria of a particular lender, as
obtained confidentially from said particular lender.” (App. Br. 8). The
Examiner responds that “Cunningham searches each participating financial
institution's selection criteria to locate the offers that may be presented to the
applicant [] implies the recited limitation...” (Ans. 17). We disagree with
Examiner and find Appellants’ arguments to be compelling.
Appeal 2009-005466
Application 10/139,418

14
While Cunningham does present financial card offers to potential
customers based on selected underwriting criteria, as discussed supra, there
is no disclosure of any confidentially from said particular lender. Therefore,
we find the Examiner has erred in finding that the combination of
Cunningham and Hillestad discloses “wherein the method comprises the
third party evaluator selecting and applying the underwriting criteria of a
particular lender, as obtained confidentially from said particular lender.”

ISSUE 2

Claims 59 and 60 under 35 U.S.C. § 103(a) as being obvious over
Cunningham, Hillestad, and Tengel.
Appellant argues that the combination of Cunningham, Hillestad and
Tengel does not disclose “the method further comprises the third party
evaluator receiving, from a lender, software that automatically applies the
selected underwriting criteria to information of the borrower.” (App. Br. 8).
The Examiner responds that “Tengel discloses that each offered loan then
has a respective loan acceptance criteria and respective loan attributes stored
in the database.” (Ans. 18). We disagree with Examiner and find
Appellants’ arguments to be compelling.
Although Tengel matches the best available loan to potential
borrowers based on criteria (FF 10, 11), there is no disclosure of the third
party evaluator receiving software from a lender in order to apply the
selected underwriting criteria. Therefore, we find the Examiner has erred in
finding that the combination of Cunningham, Hillestad and Tengel discloses
a “the method further comprises the third party evaluator receiving, from a
Appeal 2009-005466
Application 10/139,418

15
lender, software that automatically applies the selected underwriting criteria
to information of the borrower.”
Accordingly, we do not sustain the Examiner's rejection of claims 59
and 60 as rejected under 35 U.S.C. § 103(a) as being obvious over
Cunningham, Hillestad, and Tengel.

ISSUE 3

Claims 64 and 65 under 35 U.S.C. § 103(a) as being obvious over
Cunningham, Hillestad, and LoansDirect.
Appellant argues that the combination of Cunningham, Hillestad and
LoansDirect does not disclose “wherein the method further comprises the
third party evaluator issuing a loan number to the borrower while the
borrower remains anonymous to the lenders.” (App. Br. 10). To reject this
limitation the Examiner cited to the LoansDirect reference which discloses
MyLoanAccount. (Ans. 9). MyLoanAccount gives a LoansDirect user
access to all the information of his account. (FF 13). We do not agree with
the Examiner and find Appellant’s arguments to be persuasive.
Although LoansDirect gives access to account information associated
with an account (FF 13), it does not disclose issuing a loan number.
Moreover, the combination of Cunningham, Hillestad and LoansDirect does
not disclose issuing a loan number to the borrower while the borrower
remains anonymous to the lenders. Therefore, we find the Examiner has
erred in finding that combination of Cunningham, Hillestad and LoansDirect
discloses “wherein the method further comprises the third party evaluator
Appeal 2009-005466
Application 10/139,418

16
issuing a loan number to the borrower while the borrower remains
anonymous to the lenders.”
Additionally, Appellant argues that the combination of Cunningham,
Hillestad and LoansDirect does not disclose “wherein the method further
comprises the third party evaluator providing a full loan approval to the
borrower while the borrower remains anonymous to said lenders, said full
loan approval provided in connection with a particular real estate property.”
(App. Br. 10). To reject this limitation the Examiner cited to the
LoansDirect reference stating, “LoansDirect describ[es] loan approval[s] in
connection with a particular real estate property.” (Ans. 9). We disagree
with Examiner and find Appellant’s arguments to be compelling.
While LoansDirect describes a user obtaining an online loan approval
(FF 14), it does not disclose this approval being performed by a third party
evaluator. Moreover, the combination of Cunningham, Hillestad and
LoansDirect does not disclose the third party evaluator providing a full loan
approval to the borrower while the borrower remains anonymous to said
lenders. Therefore, we find the Examiner has erred in finding that
combination of Cunningham, Hillestad and LoansDirect discloses “wherein
the method further comprises the third party evaluator providing a full loan
approval to the borrower while the borrower remains anonymous to said
lenders, said full loan approval provided in connection with a particular real
estate property.”

ISSUE 4

Appeal 2009-005466
Application 10/139,418

17
Claims 58 and 59 under 35 U.S.C. § 103(a) as being obvious over
Cunningham, Tengel, and Hillestad.
With regard to Examiner’s alternative rejection and Appellant’s
response to this alternative rejection, we need not consider this additional
basis since we are relying on Examiner’s original arguments in affirming the
rejection of claim 58, i.e., we are affirming its rejection over Cunningham
and Hillestad alone, and reversing the rejection of claim 59, since we find
that the combination does not teach or suggest all of the elements of that
claim, as discussed supra.

CONCLUSION OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 67 and 68 under 35 U.S.C. § 103(a) as unpatentable over
Cunningham and Hillestad.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 59 and 60 under 35 U.S.C. § 103(a) as unpatentable over
Cunningham, Hillestad, and Tengel.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 64 and 65 under 35 U.S.C. § 103(a) as unpatentable over
Cunningham, Hillestad, and LoansDirect.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 58, 61-63, 66, and 69-71 under 35 U.S.C. § 103(a) as
unpatentable over Cunningham and Hillestad.

Appeal 2009-005466
Application 10/139,418

18
DECISION
The decision of the Examiner to reject claims 59, 60, 64, 65, 67, and
68 under 35 U.S.C. § 103(a) is REVERSED. The decision of the Examiner
to reject claims 58, 61-63, 66, and 69-71 under 35 U.S.C. § 103(a) 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).

AFFIRMED-IN-PART

MAT

cc:

Knobbe Martens Olson & Bear LLP
2040 Main Street
Fourteenth Floor
Irvine, CA 92614