Ex Parte Loganathan et al

Patent Trial and Appeal Board

Feb 6, 2019

14970212 (P.T.A.B. Feb. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/970,212 12/15/2015
20350 7590 02/08/2019
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Ravi Loganathan
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.
090850-002220US-0965602 2041
EXAMINER
BARTLEY, KENNETH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
02/08/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RA VI LOGANATHAN, RONALD SCOTT ALCORN,
SANDRA LETTERL Y, JAMES KAUFMAN, and LAURA WEINFLASH
Appeal2017-010487 1
Application 14/970,2122
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPPER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision references Appellants' Specification, ("Spec.", filed Dec. 15,
2015; Appeal Brief ("App. Br.," filed March 6, 21017) and Reply Brief
("Reply Br.," filed August 4, 2017), and the Examiner's Answer ("Ans.,"
mailed June 6, 2017) and Final Office Action ("Final Act.," mailed
September 8, 2016).
2 Appellants identify Early Warning Services, LLC as the real party in
interest. App. Br. 3.
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Application 14/970,212
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 20-35. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED INVENTION
Appellants' claimed invention relates to "systems and methods for
locating and accessing assets, such as accounts" (Spec. ,r 7).
Claims 20, 31, and 35 are the independent claims on appeal.
Claims 20 and 35, reproduced below with bracketed notations added, are
illustrative of the claimed subject matter:
20. A system, comprising:
[(a)] a database storing data for accounts from a plurality
of institutions, wherein the database is maintained by an asset
verification service separate from and serving more than one of
the institutions, the stored data for each respective account
comprising at least a personal identifier for an account holder of
that respective account, and the database also storing negative
contributed information received from one or more sources about
a number of account holders; and
[ (b)] a processor configured to:
[ (b 1)] receive via an electronic network from a loan
originator a request to locate assets, the request including
a submitted personal identifier;
[(b2)] automatically locate one or more accounts at
one or more of the institutions by matching the submitted
personal identifier to a personal identifier stored in the
database for the located accounts;
[(b3)] retrieve from the database stored data
associated with the located accounts;
[ (b4)] retrieve from the database at least some of the
negative contributed information associated with the
submitted personal identifier;
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[ (b5)] produce a report, the report indicating the
assets contained in the one or more located accounts, the
report also including at least some of the negative
contributed information; and
[ (b6)] provide the report to the loan originator from
which the request to locate assets was received.
35. A method, comprising:
[(a)] receiving a mortgage application from an applicant,
the mortgage application including personal identifying
information about the applicant;
[ (b)] transmitting the personal identifying information
about the applicant via an electronic network to an asset location
and verification service provider;
[ ( c)] receiving via the electronic network a report from
the asset location and verification service provider, the report
including information about assets owned by or associated with
the applicant;
[ ( d)] making a determination, based in part on the report,
to approve the mortgage application; and
[ ( e)] sending an identifier of the report, but not the
content of the report, directly to a government sponsored
enterprise.
REJECTI0NS 3
Claims 20-35 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 20-24 and 26-34 are rejected under 35 U.S.C. § 103 as
unpatentable over O'Neill et al. (US 2011/0087495 Al, pub. Apr. 14, 2011)
("O'Neill"), Green et al. (US 2003/0009418 Al, pub. Jan. 9, 2003)
("Green"), and Nightengale et al. (US 2010/0268696 Al, pub. Oct. 21.
2010) ("Nightengale").
3 The Examiner has withdrawn the double patenting rejection and the
rejections under 35 U.S.C. §§ 112(a) and 112(b). See Ans. 2.
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Claim 25 is rejected under 35 U.S.C. § 103 as unpatentable over the
O'Neill, Green, Nightengale, and Chapman et al. (US 8,229,806 Bl,
iss. July 24, 2012) ("Chapman").
Claim 35 is rejected under 35 U.S.C. § 103 as unpatentable over
Tealdi et al. (US 2001/0029482 Al, pub. Oct. 11, 2001) ("Tealdi"), Green,
Orfano (US 2006/0116952 Al, pub. June 1, 2006) and Kiai et al.
(US 2005/0273423 Al, pub. Dec. 8, 2005) ("Kiai").
ANALYSIS
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 573 U.S.
208,216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 573 U.S. at 217.
The first step in that analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered "individually and 'as an ordered combination"'
to determine whether there are additional elements that "'transform the
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nature of the claim' into a patent-eligible application." Id. (quoting Mayo,
566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Independent Claims 20 and 31 and Dependent Claims 21-30 and 32-34
We are not persuaded, as an initial matter, by Appellants' argument
that the Examiner erred in determining that claims 20-34 are directed to an
abstract idea (App. Br. 5-7). The Federal Circuit has explained that "the
'directed to' inquiry applies a stage-one filter to claims, considered in light
of the [S]pecification, based on whether 'their character as a whole is
directed to excluded subject matter."' Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp.,
790 F.3d at 1346). It asks whether the focus of the claims is on a specific
improvement in relevant technology or on a process that itself qualifies as an
"abstract idea" for which computers are invoked merely as a tool. See id.
at 1335-36. Here, it is clear from the Specification, including the claim
language, that the claims focus on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is entitled "SYSTEM AND METHOD TO SEARCH
AND VERIFY BORROWER INFORMATION USING BANKING AND
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INVESTMENT ACCOUNT DATA AND PROCESS TO
SYSTEMATICALLY SHARE INFORMATION WITH LENDERS AND
GOVERNMENT SPONSORED AGENCIES FOR UNDERWRITING AND
SECURITIZATION PHASES OF THE LENDING CYCLE." The
Specification describes that account balance and other information held by
an account owner are often needed by third parties for various reasons, e.g.,
in connection with an application for a mortgage or for government benefits
(Spec. ,r 2). However, according to the Specification, searching for, and
verifying account balances can be difficult and time consuming, e.g.,
because the applicant has a number of accounts at different financial
institutions, has incomplete account numbers, or may not remember or
provide information on all accounts (id. ,r 3).
The claimed invention is intended to address this issue by storing data
for accounts from a plurality of institutions, including a personal identifier
for each account holder, in a single database system so that accounts across
all these institutions can be searched and/or verified with a single request (id.
,r 26). Thus, when a request for asset information, including a submitted
personal identifier, is received, the system locates accounts by matching the
submitted personal identifier to the identifier stored in the data for the
located accounts, retrieves the stored data associated with the located
accounts, and produces a report, which then is provided to the party
submitting the request (id. ,r 8). The Specification describes that this
approach eliminates the need for contacting multiple institutions or agencies,
and also permits the data from individual or multiple accounts to be
analyzed for risk-related factors, e.g., suspicious deposits, links to known
fraudsters, etc. (id. ,r 26).
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Understood in light of the Specification, independent claim 20 is,
thus, directed to (1) collecting and storing account information in a database,
i.e., information for accounts from a plurality of institutions, including a
personal identifier for each account holder, (limitation (a)); (2) receiving a
request for account information, i.e., a request to locate assets, including a
personal identifier, from a loan originator (limitation (bl)); (3) locating and
retrieving the requested information from the database, i.e., locating one or
more accounts matching the personal identifier and retrieving stored data
associated with the located accounts and negative contributed information
associated with the personal identifier (limitations (b2) through (b4));
( 4) producing a report containing the requested information, i.e., the assets
contained in the located accounts and the negative contributed information,
(limitation (b5)); and (5) providing the report to the party from whom the
request was received, i.e., the loan originator (limitation (b6)). Simply put,
independent claims 20 and 31 4 are directed to storing account and asset
information, retrieving requested account and asset information from
storage, and generating a report-i.e., to a method of organizing human
activities and, therefore, to an abstract idea.
The Federal Circuit has consistently held that abstract ideas include
the concepts of collecting data, analyzing the data, and displaying the results
of the collection and analysis, including when limited to particular content.
See, e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting,
displaying, and manipulating data); Elec. Power Grp., LLC v. Alstom S.A.,
4 Claim 20 is an apparatus claim, and representative of claim 31, which
recites a corresponding method.
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830 F.3d 1350, 1354 (Fed. Cir. 2016) (characterizing collecting information,
analyzing information by steps people go through in their minds, or by
mathematical algorithms, and presenting the results of collecting and
analyzing information, without more, as matters within the realm of abstract
ideas); see also SAP America, Inc. v. Investpic, LLC, 898 F .3d 1161, 1168
(Fed. Cir. 2018) ("As many cases make clear, even if a process of collecting
and analyzing information is 'limited to particular content' or a particular
'source,' that limitation does not make the collection and analysis other than
abstract." (quoting Elec. Power Grp., 830 F.3d at 1353, 1355 (citing cases)).
Reporting account balance and other asset information, e.g., in connection
with an application for a mortgage or for government benefits, also is a
fundamental economic practice (see, e.g., Spec. ,r,r 2, 3) and, therefore, an
abstract idea.
Independent Claim 35
We also are not persuaded that the Examiner erred in determining that
independent claim 3 5 is directed to an abstract idea. Claim 3 5 recites a
method comprising five steps: ( 1) receiving a mortgage application,
including personal identifying information regarding the applicant;
(2) transmitting the personal identification information to a third party, i.e.,
an asset location and verification service provider; (3) receiving a report
from the asset location and verification service provider; and ( 4) making a
determination, based in part on the report, to approve the mortgage
application; and ( 5) sending an identifier of the report, but not the content of
the report, directly to a government sponsored enterprise. In other words,
claim 35 is directed to processing a mortgage application, i.e., to a
fundamental economic practice, and, therefore, to an abstract idea.
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It also is significant here that although claim 35 recites that the
personal identifying information is transmitted to the asset location and
verification service provider via an electronic network, and that the report
from the asset location and verification service provider is received via the
electronic network, the method steps involve no more than the exchange of
information and, as the Examiner observes (see Final Act. 16), can be
performed by a human, e.g., using a pen and paper, without the use of a
computer network or any other machine. For example, a mortgage company
could communicate the personal identifying information to the asset location
and verification service provider either orally or via written correspondence,
e.g., using pen and paper. And the asset location and verification service
provider could likewise provide its report via an oral or written
communication.
The law is clear that a process that can be performed in the human
mind or by a human using pen and paper is an unpatentable mental process,
i.e., an abstract idea. See CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372 (Fed. Cir. 2011); see also Gottschalkv. Benson,
409 U.S. 63, 67 (1972) ("Phenomena of nature ... , mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work."). Moreover, mental processes remain
unpatentable even when automated to reduce the burden on the user of what
once could have been done with pen and paper. Cy her Source, 654 F .3d
at 1375 ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.").
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Appellants' Arguments
Appellants argue that the claims do not seek to patent "locating
assets" (referring to claims 20-34) or "how to approve a mortgage"
(referring to claim 35) but instead recite "specific communications
conducted over an electronic network among entities in a novel
arrangement" (App. Br. 7). Appellants ostensibly maintain that the claims
cannot be abstract because the claims require "hardware infrastructure" (id.).
Yet, claims to an abstract idea are not made less abstract simply because a
computer and/ or other hardware components are required. See, e.g., In re
TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016)
("[N]ot every claim that recites concrete, tangible components escapes the
reach of the abstract-idea inquiry.").
We find no indication in the Specification, nor do Appellants direct us
to any indication, that the operations recited in claims 20 and 35, for
example, invoke any assertedly inventive programming, require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) ("[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible."). In fact, the Specification discloses just the opposite, i.e.,
that the claimed invention may be implemented using only generic computer
components (see, e.g., Spec. ,r,r 56-58).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
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different state or thing or an improvement in computer functionality. Nor do
we find anything in the Specification that attributes an improvement in
another technology or technical field to the claimed invention or otherwise
indicates that the claimed invention integrates the abstract idea into a
"practical application," as that phrase is used in the USPTO's "2019 Revised
Patent Subject Matter Eligibility Guidance," 84 Fed. Reg. 50, 55 (January 7,
2019). 5
We also are not persuaded of Examiner error to the extent Appellants
argue that the claims are patent eligible because they pose no risk of
preemption (App. Br. 7 ("[C]laim 20 recites a computer system specifically
programmed to ... receive messages over an electronic network, and to
locate and report assets in a novel way. These limitations obviate any risk
that claim 20 could be interpreted to cover all possible techniques for
locating assets."); see also id. at 10 ("Appellant's [sic] claims do not
preempt all ways of performing asset verifications.")). There is no dispute
that the Supreme Court has described "the concern that drives [ the exclusion
of abstract ideas from patent eligible subject matter] as one of pre-emption."
Alice Corp., 573 U.S. at 216. But, characterizing preemption as a driving
concern for patent eligibility is not the same as characterizing preemption as
the sole test for patent eligibility. "The Supreme Court has made clear that
5 In accordance with the USP TO' s revised guidance, a claim will be
considered "directed to" an abstract idea if ( 1) the claim recites subject
matter falling within one of the following groupings of abstract ideas: (a)
mathematical concepts; (b) certain methods of organizing human
interactions, e.g., fundamental economic principles or practices, commercial
or legal interactions; and ( c) mental processes, and (2) the claim does not
integrate the abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 54--55.
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the principle of preemption is the basis for the judicial exceptions to
patentability" and "[f]or this reason, questions on preemption are inherent in
and resolved by the§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct.
at 2354). "[P]reemption may signal patent ineligible subject matter, [but]
the absence of complete preemption does not demonstrate patent eligibility."
Id.
Appellants further argue that claims 20-35 are patent-eligible in light
of BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016) and Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288 (Fed. Cir. 2016) (App. Br. 8-11). Yet, we can find no
parallel between the present claims and those at issue in either BASCOM or
Amdocs.
Appellants argue that, just as an "inventive concept" could be found in
BASCOM's claims by "the installation of a filtering tool at a specific
location, remote from the end-users, with customizable filtering features
specific to each end user," an inventive concept can be found in "the
arrangement of elements" in claim 20, which allows data from a number of
institutions to be searched in response to a single request without having to
contact each institution individually (id. at 8-10). We do not agree that
BASCOM is sufficiently analogous to control the outcome here.
In BASCOM, the Federal Circuit held that the second step of the
Mayo/Alice framework was satisfied because the claimed invention
"represents a 'software-based invention[ ] that improve[ s] the performance
of the computer system itself."' BASCOM, 827 F.3d at 1351 (stating that
like DDR Holdings, where the patent "claimed a technical solution to a
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problem unique to the Internet," the patent in BASCOM claimed a
"technology-based solution ... to filter content on the Internet that
overcomes existing problems with other Internet filtering systems ...
making it more dynamic and efficient") ( citations omitted). Appellants
ostensibly maintain that storing data for accounts from a plurality of
institutions in a single database maintained by an asset verification service
separate from the institutions, as called for in claim 20, and that providing an
asset location/verification service provider separate from the loan originator,
as called for in claim 35, provides a technological improvement analogous to
that in Bascom (App. Br. 9-10). But, we are not persuaded that aggregating
account data in a single database or providing an asset location/verification
service provider separate from a loan originator is a technological
improvement, as opposed to an improvement in a business practice for
which generic computer components are used in their ordinary capacity.
We also see no parallel between the present claims and the claims in
Amdocs (see App. Br. 10-11). In Amdocs, the Federal Circuit held the claim
was patent eligible because the claim entails an unconventional
technological solution ( enhancing data in a distributed fashion) to a
technological problem (massive record flows which previously required
massive databases). Although the solution requires generic components, the
court determined that "the claim's enhancing limitation necessarily requires
that these generic components operate in an unconventional manner to
achieve an improvement in computer functionality" and that the "enhancing
limitation depends not only upon the invention's distributed architecture, but
also depends upon the network devices and gatherers - even though these
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may be generic - working together in a distributed manner." Amdocs,
841 F.3d at 1300--01.
Appellants argue that claim 20 is patent-eligible in light of Amdocs
because "claim 20 is far, far more concrete than the claim from Amdocs"
(i.e., in that claim 20 recites "actual hardware - specifically a network
interface and a processor" and "the arrangement of entities in the invention
of ... claim 20 is spelled out in the claim itself, and need not be inferred by
reference to the specification"), and that independent claims 31 and 35 and
the dependent claims are patent-eligible for similar reasons (App. Br. 11 ).
But, Appellants do not identify any "distributed architecture" comparable to
that in Amdocs or otherwise establish that the generic components recited in
the pending claims operate in an unconventional manner.
We also are not persuaded by Appellants' argument that the § 101
rejection should be withdrawn in light of Ex parte Ravenel,
Appeal 2015-003604 (PTAB 2016) (App. Br. 11-14). What a different
panel did in a different situation under a different set of facts has little
bearing on the proper disposition of this case. Ravenel also is a non-
precedential decision of the Board; therefore, it is not binding on this panel.
In rejecting the claims under § 101, the Examiner determined that
"[ c ]laims 20-34 are directed to the abstract idea of a series of steps
instructing how to locate account and asset information and data which is a
fundamental economic practice and thus an abstract idea" (Final Act. 16).
Appellants argue that the dependent claims do not stand or fall with their
independent claims in an analysis under 35 U.S.C. § 101, and that the
Examiner has failed to establish a prima facie case of patent-eligibility with
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respect to dependent claims 21-30 and 32-34 (App. Br. 14; see also Reply
Br. 2-3).
We decline to find error in the Examiner's decision not to address the
patent-eligibility of each of claims 20-34 separately inasmuch as the claims
are all directed to the same abstract idea. See. Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1348
(Fed. Cir. 2014) ( explaining that ,:vhen all claims are directed to the same
abstract idea~ "addressing each claim of the asse1ied patents [is]
unnecessary.'} Independent claims 20 and 31, as described above, are
substantially similar. Claim 20 recites a system for locating, accessing, and
reporting account information responsive to a request; claim 31 recites a
corresponding method; and the dependent claims merely further detail the
nature of the request and the account information and the contents of the
report. Aside from asserting that the Examiner failed to consider the
limitations of dependent claims 21-30 and 32-34 individually, Appellants
offer no separate arguments for the patent-eligibility of these dependent
claims.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 20-35 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection.
Obviousness
Independent Claims 20 and 31 and Dependent Claims 21-24, 26--30, and
32-34
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claims 20 and 31 under 35 U.S.C. § 103(a) because
O'Neill, on which the Examiner relies, does not disclose or suggest
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"receiv[ing] ... from a loan originator a request to locate assets" and
"produc[ing] a report ... indicating the assets contained in the one or more
located accounts," as recited in independent claim 20, and similarly recited
in independent claim 31 (App. Br. 15-16).
0 'Neill is directed to a system and method for monitoring financial
institution business activity for the purpose of identifying suspicious
activity, and discloses that the identification of suspicious activities serves to
identify the individual(s) associated with the suspicious activities and/or
other information related to the individual(s), e.g., physical location,
electronic location, telephone number and the like (O'Neill Abstract). In
rejecting claims 20 and 31 under§ 103(a), the Examiner cites paragraphs 10,
13, and 67 of O'Neill as disclosing "receiv[ing] ... from a loan originator a
request to locate assets" (Final Act. 23-24), and cites paragraph 27 of
O'Neill as disclosing "produc[ing] a report ... indicating the assets
contained in the one or more located accounts" (id. at 25-26).
We have carefully reviewed the cited portions of O'Neill, on which
the Examiner relies, and we agree with Appellants that O'Neill, at best,
discloses identifying, i.e., locating, accounts (App. Br. 15). But, we find
nothing in the cited portions of O'Neill that discloses or suggest receiving a
request to locate asserts and producing a report indicating assets contained in
one or more located accounts, as called for in independent claims 20 and 31.
Therefore, we do not sustain the Examiner's rejection of independent
claims 20 and 31 under 35 U.S.C. § 103(a). For the same reasons, we also
do not sustain the rejection of dependent claims 21-24, 26-30, and 32-34.
Cf In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims
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are nonobvious if the independent claims from which they depend are
nonobvious").
Dependent Claim 25
Claim 25 depends from independent claim 20. The rejection of
dependent claim 25 does not cure the deficiency in the rejection of
independent claim 20. Therefore, we do not sustain the Examiner's rejection
of claim 25 for the same reasons set forth above with respect to claim 20.
Independent Claim 35
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 35 under 35 U.S.C. § 103(a) because Tealdi, on
which the Examiner relies, does not disclose or suggest "sending an
identifier of the report, but not the content of the report, directly to a
government sponsored enterprise (App. Br. 17-19).
Tealdi is directed to an online mortgage approval settlement system
and method (see, e.g., Tealdi ,r 2). In rejecting claim 35 under§ 103(a), the
Examiner cites paragraph 50 of Tealdi as disclosing the argued limitation
(Final Act. 35-36). There, Tealdi describes the recordation process, in
which a county recorder is informed of a sale of real estate, and records
certain information about the sale in the public record. We agree with
Appellants that, even assuming that a county recorder is a government
sponsored enterprise, there is nothing in the cited paragraph that discloses or
suggests "sending an identifier of the report [including information about
assets owned by or associated with the mortgage applicant], but not the
content of the report," to the recorder, as called for in claim 35 (App.
Br. 18).
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Therefore, we do not sustain the Examiner's rejection of claim 35
under 35 U.S.C. § 103(a).
DECISION
The Examiner's rejection of claims 20-35 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejections of claims 20-35 under 35 U.S.C. § 103(a)
are 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)(l )(iv).
AFFIRMED
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