Ex Parte Lewis et al

Patent Trial and Appeal Board

Nov 25, 2013

11615549 (P.T.A.B. Nov. 25, 2013)

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.
11/615,549 12/22/2006 Mark K. Lewis BPCCR0028ML_SLG 1070
27939 7590 11/26/2013
PHILIP H. BURRUS, IV
460 Grant Street SE
Atlanta, GA 30312
EXAMINER
APPLE, KIRSTEN SACHWITZ
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
11/26/2013 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 MARK K. LEWIS,
RICKY LOFTSGARD,
KASRA NADERI, and
RICHARD C. POTTER
____________

Appeal 2011-013179
Application 11/615,549
Technology Center 3600
____________

Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
THOMAS F. SMEGAL, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Mark K. Lewis, et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the final rejection of claims 1-3, 5-11, 15, and 21. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

Appeal 2011-013179
Application 11/615,549

2

SUMMARY OF DECISION
We REVERSE.1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for providing a financing service, the method comprising
the steps of:
an underwriter computer system receiving from a dealer
computer system via a communications network an offer-to-sell a debt
instrument associated with a dealer financing of a customer purchase
of a product and specifying a down payment and a payment schedule
of future payments, the offer-to-sell comprising information about the
customer's capacity to make the future payments, collateral for the
debt instrument, and credit worthiness of the customer;
the underwriter computer system determining a credit score
based on the information in the offer-to-sell received from the dealer;
the underwriter computer system determining to purchase the
debt instrument based on the credit score and the information in the
offer-to-sell;
the underwriter computer system establishing an account
portfolio associated with the dealer;
the underwriter computer system simultaneously providing to
the dealer computer system via the communications network a
plurality of offers for purchasing the debt instrument from the dealer,
each offer including unique purchase offer parameters comprising at
least a unique advancement amount specifying an advance amount to

1 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed Mar. 10, 2011) and the Examiner’s Answer (“Ans.,” mailed Jun. 7,
2011).
Appeal 2011-013179
Application 11/615,549

3
pay the dealer upon acceptance of the offer and a unique sharing
percentage specifying a percentage of the future payments that the
underwriter will share with the dealer from the account portfolio, and
each offer is based at least in part on at least a portion of the
information in the offer-to-sell received from the dealer computer
system;
the underwriter computer system receiving from the dealer
computer system via the communications network an acceptance of
one of the plurality of offers; and
the underwriter computer system incorporating the debt
instrument and the associated unique purchase offer parameters into
the account portfolio stored in a database, the account portfolio
comprising a plurality of previously-purchased debt instruments
associated with the dealer, wherein the account portfolio comprises an
initial fixed value which is decreased by the value of incorporated
debt instruments.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Olin
Lebda
Rosen
Conklin

US 2002/0069160 A1
US 2005/0273406 A1
US 2008/0126267 A1
US 7,444,301 B2
Jun. 6, 2002
Dec. 8, 2005
May 29, 2008
Oct. 28, 2008
“The examiner claims official notice that paying a sales commission is
a common and well know practice in the industry. The dealer is
acting as the underwriters sales function in this setup and it would
customary to pay a sales commission.” Ans. 12 (hereinafter “Official
Notice”).
The following rejections are before us for review:
Appeal 2011-013179
Application 11/615,549

4
1. Claims 1-3 and 5-72 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lebda, Olin and Conklin.
2. Claims 8-11, and 15 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Lebda, Olin, Conklin and Rosen.
3. Claim 21 is rejected under 35 U.S.C. §103(a) as being unpatentable
over Lebda, Olin, Conklin, and Official Notice.

ISSUE
Does item 8 in Figure 1 of Lebda in fact show “the underwriter
computer system simultaneously providing to the dealer computer system
via the communications network a plurality of offers for purchasing the debt
instrument from the dealer” (claim 1, emphasis added) as the Examiner
found (Ans. 5)?

ANALYSIS
The rejection of claims 1-3 and 5-7 under 35 U.S.C. § 103(a) as being
unpatentable over Lebda, Olin and Conklin.
The only argument raised in the Brief is that item 8 in Figure 1 of
Lebda does not in fact show “the underwriter computer system
simultaneously providing to the dealer computer system via the
communications network a plurality of offers for purchasing the debt
instrument from the dealer” (claim 1) as the Examiner found (Ans. 5).

2 It appears the Examiner inadvertently included claim 21 in the statement of
the rejection.
App
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13179
/615,549
of Lebda,
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is added)

Appeal 2011-013179
Application 11/615,549

6
Because it does not show “the underwriter computer system
simultaneously providing to the dealer computer system via the
communications network a plurality of offers for purchasing the debt
instrument from the dealer” (claim 1), it also does not further show
each offer including unique purchase offer parameters
comprising at least a unique advancement amount specifying an
advance amount to pay the dealer upon acceptance of the offer
and a unique sharing percentage specifying a percentage of the
future payments that the underwriter will share with the dealer
from the account portfolio, and each offer is based at least in
part on at least a portion of the information in the offer-to-sell
received from the dealer computer system
(claim 1), which was also found to be shown at item 8 of Figure 1. Ans. 5.
For the foregoing reasons, we find that a prima facie case of
obviousness has not been made out for the subject matter of claim 1, and
claims 2, 3 and 5-7 dependent on claim 1, in the first instance.

The rejection of claims 8-11 and 15 under 35 U.S.C. § 103(a) as being
unpatentable over Lebda, Olin, Conklin and Rosen.
This rejection is directed to claims dependent on claim 1 whose
rejection we have reversed above. For the same reasons, we will not sustain
the rejections of these claims over the cited prior art. Cf. In re Fritch, 972
F.2d 1260, 1266 (Fed. Cir. 1992) (“[D]ependent claims are nonobvious if the
independent claims from which they depend are nonobvious.”).

The rejection of claim 21 under 35 U.S.C. § 103(a) as being unpatentable
over Lebda, Olin, Conklin, and Official Notice.
Claim 21 is the other independent claim. However, it too includes the
Appeal 2011-013179
Application 11/615,549

7
limitation
the underwriter computer system simultaneously providing to
the dealer computer system via the communications network a
plurality of offers for purchasing the debt instrument from the
dealer, each offer including unique purchase offer parameters
comprising at least a unique advancement amount specifying an
advance amount to pay the dealer upon acceptance of the offer
by the dealer and a unique sharing percentage specifying a
percentage of the future payments that the underwriter will
share with the dealer from an account portfolio, and each offer
is based at least in part on at least a portion of the information
in the offer-to-sell received from the dealer computer system.
It appears that the Examiner is relying on the finding with respect to the
rejection of claim 1 that this limitation is disclosed in item 8 of Lebda’s
Figure 1. For the reasons already discussed, we do not find it there.
Accordingly, we do not find that a prima facie case of obviousness has been
made out in the first instance for the subject matter of claim 21.

DECISION
The decision of the Examiner to reject claims 1-3, 5-11, 15, and 21 is
reversed.

REVERSED

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