Ex Parte Lutnick

Patent Trial and Appeal Board

Jun 30, 2016

12825704 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/825,704 06/29/2010
63710 7590 07/05/2016
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Howard W. LUTNICK
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.
07-2174-Cl 2174
EXAMINER
MILEF, ELDA G
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
07/05/2016 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):
patentdocketing@cantor.com
lkorovich@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HOW ARD W. LUTNICK
Appeal2014-005413 1
Application 12/825,7042
Technology Center 3600
Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and
TARA L. HUTCHINGS, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 2, 4--19, and 21-3 7. We have jurisdiction under
35 U.S.C. §§ 134 and 6(b).
We AFFIRM-IN-PART.
1 Our decision refers to the Appellant's Appeal Brief ("Appeal Br.," filed
Nov. 18, 2013) andReplyBrief("ReplyBr.," filed Mar. 27, 2014), and the
Examiner's Final Office Action ("Final Act.," mailed Nov. 19, 2012) and
Answer ("Ans.," mailed Jan. 27, 2014).
2 According to Appellant, the real party in interest is CFPH, L.P. (Appeal
Br. 3).
Appeal2014-005413
Application 12/825,704
Introduction
Appellant's disclosure relates to sharing revenue with various entities,
and in particular to distributing portions of loan payments to one or more
referrers associated with one or more loans (see Spec. i-fi-163, 106).
Claims 1 and 18 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. An apparatus comprising:
a non-transitory medium, having stored thereon, a set of
instruction, in which, when executed by a computing device, the set of
instructions enable the computing device to:
receive respective first indications of each of a plurality of
lenders, in which each first indication identifies lending parameters
for a respective lender of the plurality of lenders;
receive a second indication of a borrower, in which the second
indication identifies borrowing desires of the borrower defining a
loan;
match the plurality of lenders and the borrow to form the loan
from the plurality of lenders to the borrower based on a similarity of
the borrowing desires to the lending parameters;
determine a first allocation of a payment of at least one of
interest and principal associated with the loan from the lenders to the
borrower to allocate to a first party other than the lenders and the
borrower; and
transmit an indication of the first allocation.
(Appeal Br., Claims App.)
Rejections on Appeal
The Examiner maintains, and the Appellant appeals, the following
rejections:
1. Claims 1, 2, 4--7, 9, 10, 12-15, 17-19, 21-24, 26, 27, 29-32,
and 34--37 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Constantine (US 6,739,506 Bl, iss. May 25, 2004), Kelly (US
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Application 12/825,704
2008/0046365 Al, pub. Feb. 21, 2008), and Parthasarathy (US 7,447,656
B2, iss. Nov. 4, 2008).
2. Claims 8, 11, 25, and 28 stand rejected under 35 U.S.C. §
103(a) as being unpatentable over Constantine, Kelly, Parthasarathy, and
MICROSOFT COMPUTER DICTIONARY 129 (5th ed. Microsoft Corp. 2002).
3. Claims 16 and 33 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Constantine, Kelly, Parthasarathy, and Dascalu (US
2003/0177277 Al, pub. Sept. 18, 2003). 3
ANALYSIS
Independent claims 1 and 18
Appellant argues claims 1 and 18 as a group (Appeal Br. 8). We
select claim 1 as the representative claim for this group, and the remaining
independent claim 18 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv)
(2012).
Appellant sets forth three arguments for the patentability of
independent claim 1, which we address in tum. First, Appellant argues that
Parthasarathy fails to disclose matching the plurality of lenders and the
borrower, as recited by independent claim 1, i.e., "match the plurality of
lenders and the borrow to form the loan from the plurality of lenders to the
borrower based on a similarity of the borrowing desires to the lending
parameters" (Appeal Br. 8). Appellant asserts that there is no teaching or
suggestion that a plurality of lenders are matched to a single borrower
(Appeal Br. 9).
3 The Final Office Action set forth an additional rejection under 35 U.S.C.
§ 112. We consider the rejection under 35 U.S.C. § 112 to have been
withdrawn because it was not included in the Examiner's Answer.
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Application 12/825,704
We agree with Appellant inasmuch as Parthasarathy (col. 5, 11. 59----67;
col. 6, 11. 14--58; col. 6, 1. 55---col. 7) discloses that a computer provides a
borrower with multiple loan offers from multiple offerors, and the borrower
proceeds to select a loan from among the options provided (Final Act. 3;
Ans. 2). For example, in Parthasarathy, the borrower may select among
several matches based on bidding in an auction (col. 6, 1. 55---col. 7).
However, the use of a computer to perform the task performed by the
borrower in Parthasarathy, i.e., selecting one match from among several
matches, is no more than the obvious application of modem electronics to a
human analog task. See Leapfrog Enterprises, Inc. v. Fisher Price, Inc., 485
F.3d 1157, 1162 (Fed. Cir. 2007) ("[O]ne of ordinary skill in the art ...
would have found it obvious to combine the Bevan device with the SSR to
update it using modem electronic components in order to gain the commonly
understood benefits of such adaptation, such as decreased size, increased
reliability, simplified operation, and reduced cost.").
Second, Appellant argues that Constantine, relied on by the Examiner
in the rejection of independent claim 1, is non-analogous art (see Appeal Br.
9). Appellant asserts that Constantine has a different (PTO) classification,
and relates to credit card processing rather than loan origination (id.). We,
however, agree with the Examiner that Constantine's method for providing
credit card applications to customers, through referring parties, is a form of
lending, and is also directed to matching a borrower to lenders (Final Act. 4;
Ans. 2). See In re Bigio, 381F.3d1320, 1325-26 (Fed. Cir. 2004) (a
reference is analogous art if it is within the same field of endeavor or is
reasonably pertinent to the problem addressed by the applicant).
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Third, Appellant argues that the Examiner's proposed combination of
Parthasarathy would render Kelly inoperable for its intended purpose of
providing compensation to a sales force with incentives by eliminating the
sales force all together (see Appeal Br. 10). The Examiner states that Kelly
is merely being relied on for the old and well-known concept of incentives to
a sales force, in combination with Johnson's teaching of using referral
agents (Ans. 3). We agree with the Examiner that it would have been
obvious to a person of ordinary skill in the art to have combined the teaching
of Kelly, of compensating someone who promotes sales, with Johnson's
teaching that parties may refer (or promote) credit card business through
referrals. As such, the Examiner's proposed modification merely relies on
Parthasarathy for its teaching as to how a loan business may be conducted by
computer but does not propose to eliminate those who promote business, as
Appellant contends. In sum, we agree with the Examiner that it would have
been obvious for a person of ordinary skill in the art to have compensated
those who electronically promote loan business by referring customers to
lenders.
For these reasons, we sustain the Examiner's rejection under 35
U.S.C. § 103(a) of independent claims 1 and 18.
Dependent claims 6 and 23
We are unpersuaded by Appellant's argument that Constantine fails to
disclose "at least one of the first party includes a referrer of at least one
lender of the plurality of lenders," as recited by dependent claim 6 (Appeal
Br. 10-11). Appellant acknowledges that Constantine (col. 4, 11. 29-32, col.
5, 11. 22-38) discloses referral of a credit card applicant to a credit card
company but contends, even if a credit card company is a lender, that a
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referral of a borrower to a lender is not a referral of a lender (Appeal Br. 11 ).
We disagree. Constantine (col. 5, 11. 27-32) discloses at least two
embodiments: "In one scenario, the service provider provides the authorized
user with credit card applications for the authorized user to provide to
referred customers. In another scenario, the referred customer contacts the
service provider at the instruction of the authorized user." We agree with
the Examiner at least because the recommendation for a customer to contact
a service provider is a referral of a lender. We, therefore, sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of dependent claim 6.
Appellant does not argue the patentability of claim 23 separately from
claim 6. We sustain the Examiner's rejection under 35 U.S.C. § 103(a) of
claim 23 for similar reasons, as for claim 6.
Dependent claims 16 and 33
We are unpersuaded by Appellant's argument that the Examiner has
violated 3 7 CPR § 1.104( c )(2) in rejecting claims 16 and 3 3 by citing
Dascalu without a paragraph number (Appeal Br. 11 ). First, the Examiner
has not merely cited an entire reference, but relies on a specific teaching of
Dascalu in the Final Office Action (see Final Act. 12). Second, the
Examiner's Answer supplies the corresponding citation to paragraph 65
(Ans. 4), and Appellant has not petitioned for designation of the Answer as a
new ground of rejection.
In the Reply Brief, Appellant argues that paragraph 65 of Dascalu
does not discuss a borrower or a lender (Reply Br. 5-6). However, the
Examiner does not rely on Dascalu for a disclosure of a borrower or a
lender, but merely on its teaching that a referring user may set a fee, or may
be paid a fee based on factors such as ratings (see Final Act. 12). We agree
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with the Examiner that it would have been obvious for a person of ordinary
skill in the art to have combined Dascalu' s teachings as to how to set a fee
for a referral with Constantine's teaching that a fee may be paid to one who
refers credit card customers (loan customers). See In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (one cannot show non-obviousness by
attacking references individually when the rejection is based on a
combination of references).
We, therefore, sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of claims 16 and 33.
Dependent claims 7 and 24
Appellant's arguments with respect to dependent claims 7 and 24 are
similar to those for dependent claims 6 and 23 (see Appeal Br. 12), and we
are unpersuaded for similar reasons. Accordingly, we sustain the
Examiner's rejection under 35 U.S.C. § 103(a) of dependent claims 7 and
24, for similar reasons for claims 6 and 23.
Dependent claims 8, 11, 25, and 28
We are persuaded by Appellant's argument that the prior art relied on
by the Examiner fails to disclose "the indication of the referral includes a
cookie saved on a remote computer system associated with the at least one
lender," as recited by dependent claim 8 (Appeal Br. 13). The Examiner
relies on a dictionary for a definition of a "cookie." Nevertheless, we agree
with Appellant that there is insufficient evidentiary support for the
Examiner's determination (see Final Act. 11; Ans. 5---6) that it would have
been obvious to one having ordinary skill in the art to include in a credit
card referral website the ability to identify users through the use of cookies,
in the context of compensating those who refer business, as recited by
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independent claim 1, from which claim 8 depends (see Appeal Br. 13). We,
therefore, do not sustain the Examiner's rejection under 35 U.S.C. § 103(a)
of dependent claim 8. We do not sustain the Examiner's rejection under 35
U.S.C. § 103(a) of dependent claims 11, 25, and 28, which recite similar
language, for similar reasons.
Dependent claims 2, 4, 5, 9, 10, 12-15, 17, 19, 21, 22, 26, 27, 29-32, and
34-37
Appellant does not argue the Examiner's rejections of claims 2, 4, 5,
9, 10, 12-15, 17, 19, 21, 22, 26, 27, 29-32, and 34--37 separately from
independent claims 1 and 18, from which they each depend. We, therefore,
sustain the Examiner's rejections under 35 U.S.C. § 103(a) of claims 2, 4, 5,
9, 10, 12-15, 17, 19, 21, 22, 26, 27, 29-32, and 34--37, for similar reasons as
for independent claims 1 and 18.
DECISION
The Examiner's decision to reject claims 1, 2, 4--7, 9, 10, 12-19, 21-
24, 26, 27, and 29-37 under 35 U.S.C. § 103(a) is affirmed.
The Examiner's decision to reject claims 8, 11, 25, and 28 under
35 U.S.C. § 103(a) 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)(l )(iv).
AFFIRMED-IN-PART
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