Ex Parte Powell et al

Board of Patent Appeals and Interferences

May 8, 2012

11856791 (B.P.A.I. May. 8, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/856,791 09/18/2007 Shawna Kerry Powell BPCCR0018CC 9720
27939 7590 05/08/2012
PHILIP H. BURRUS, IV
460 Grant Street SE
Atlanta, GA 30312
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
05/08/2012 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 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte SHAWNA KERRY POWELL and RAYMOND GERBER 8
___________ 9
10
Appeal 2010-010234 11
Application 11/856,791 12
Technology Center 3600 13
___________ 14
15
16
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and 17
BIBHU R. MOHANTY, Administrative Patent Judges. 18
FETTING, Administrative Patent Judge. 19
DECISION ON APPEAL 20
21
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Application 11/856,791

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STATEMENT OF THE CASE1 1
Shawna Kerry Powell and Raymond Gerber (Appellants) seek review 2
under 35 U.S.C. § 134 (2002) of a final rejection of claims 1-18, the only 3
claims pending in the application on appeal. We have jurisdiction over the 4
appeal pursuant to 35 U.S.C. § 6(b) (2002). 5
The Appellants invented a way of facilitating due diligence in 6
completing an electronic transaction, by requesting verification 7
documentation in response to receiving an on-line loan application. 8
(Specification ¶ 001). 9
An understanding of the invention can be derived from a reading of 10
exemplary claim 1, which is reproduced below [bracketed matter and some 11
paragraphing added]. 12
1. A method, 13
operable with one or more processors 14
to control the one or more processors from a server 15
to implement on-line loan application completion with a 16
client terminal, 17
the method comprising the steps of: 18
[1] presenting, 19
electronically, over a network on the client 20
terminal 21
an on-line loan application; 22
[2] receiving 23

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed February 25, 2010) and Reply Brief (“Reply Br.,” filed July 27,
2010), and the Examiner’s Answer (“Ans.,” mailed April 14, 2010).
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at least a partially completed on-line loan application 1
from a prospective borrower, 2
the on-line loan application comprising at least 3
personal information, 4
bank information, 5
and 6
financial information; 7
[3] assigning 8
a reference number 9
to the at least a partially completed loan 10
application; 11
[4] performing 12
verification analysis on one of the 13
personal information, 14
bank information, 15
or 16
financial information; 17
[5] detecting 18
at least one anomaly 19
with the one of the 20
personal information, 21
bank information, 22
or 23
financial information; 24
[6] generating, 25
electronically, over the network on the client 26
terminal, 27
a prompt 28
requesting verification documentation 29
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relating to the anomaly with the one of the 1
personal information, bank information, or 2
financial information 3
and 4
[7] delivering 5
a fax coversheet 6
to the client terminal, 7
the fax cover sheet comprising 8
an indication of the verification documentation. 9
The Examiner relies upon the following prior art: 10
Freeman ‘137 US 2002/0059137 A1 May 16, 2002
Bosch US 2003/0225692 A1 Dec. 4, 2003
Hu US 2003/0233316 A1 Dec. 18, 2003
Horn US 2004/0215552 A1 Oct. 28, 2004
Freeman ‘285 US 2007/0050285 A1 Mar. 1, 2007
Marlow US 2007/0239574 A1 Oct. 11, 2007
McDermott - IntraLinks' Fax-in to increase Loan Transaction Efficiency. 11
Judy McDermott. Bank Loan Report. Sep. 20, 2004. p. 1. 12
Claims 1, 4-7, 9, 13 and 14 stand rejected under 35 U.S.C. § 103(a) as 13
unpatentable over Hu, Freeman '137, Marlow, Freeman '285, and 14
McDermott. 15
Claims 2, 3, 8, and 15-18 stand rejected under 35 U.S.C. § 103(a) as 16
unpatentable over Hu, Freeman '137, Marlow, Freeman '285, McDermott, 17
and Admitted Prior Art. 18
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 19
Hu, Freeman '137, Bosch, and McDermott . 20
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Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Hu, Freeman '137, Bosch, McDermott, and Horn. 2
ISSUES 3
The issues of obviousness turn primarily on whether there was sufficient 4
reason to pull the teachings together from 5 references plus administrative 5
notice. 6
FACTS PERTINENT TO THE ISSUES 7
The following enumerated Findings of Fact (FF) are believed to be 8
supported by a preponderance of the evidence. 9
Facts Related to the Prior Art 10
Hu 11
01. Hu is directed to [0010] an on-line interface system for facilitating 12
the processing of loan applications by loan originators. A 13
processing and submission system receives relevant loan 14
information from a borrower and enters this information into file 15
templates during loan origination. An automatic data flow process 16
populates the relevant fields in all of the other loan forms and 17
word processing documents. Once information is entered into each 18
data field, e.g., borrower's name and address, of the file template 19
during the loan origination process, the information is saved in a 20
database. Thereafter, when a particular loan form is activated, the 21
automatic data flow program conducts a search for each data field. 22
Alternatively, each loan form can be modified to insert embedded 23
codes, so that the computer program can more easily identify the 24
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location of a data field and enter the associated information. Hu ¶ 1
0010. 2
02. A document inventory tracking process is used to search and track 3
documents within the system using many different types of 4
searchable criteria, such as borrower name. In particular a loan 5
number is applied and used as a reference number for searching. 6
Hu ¶ 0043. 7
03. [0065] An interface allows the consumer to provide certain data, 8
such as personal information, bank information, and financial 9
information as shown in, for example, FIG. 6. Hu ¶ 0065. 10
Freeman '137 11
04. Freeman '137 is directed to an online mortgage application 12
processing system that allows a mortgage originator to upload 13
mortgage loan application data and then have the application 14
processed from that point through registration of the loan, 15
underwriting, locking the loan and ultimately to the transfer of 16
finds for loan closing, via a secure web site. The originator can 17
use the web site to track multiple loan applications and, because 18
the web site permits communication between the originator and 19
the lender, enables the originator to address more effectively the 20
issues that inevitably develop during processing. Freeman '137 ¶ 21
0016. 22
05. Freeman '137 ¶ 0016 describes the pre-existing practice of 23
underwriting, being the process of evaluating the information 24
supplied by the borrower to determine if the loan can be made or 25
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at what interest rate it can be made. Sometimes a conditional 1
approval is given at this stage. For final approval, the borrower 2
must furnish documentation intended to verify the statements 3
made on the loan application, such as a W-2 form and a bank 4
statement. If the documentation does not support the information 5
given, the preliminary indication that the loan would be give may 6
have to change, additional conditions may be imposed or the rate 7
may change. Freeman '137 ¶ 0016. 8
Marlow 9
06. Marlow is directed to real estate transactions concerning the 10
purchase or sale of real property in association with a selling agent 11
that receives a commission for any sale consummated and a 12
mortgage originator that receives a portion of the mortgage 13
origination proceeds. This comprises the steps of engaging the 14
realtor to assist in the real estate transaction, engaging the 15
mortgage originator to assist in the real estate transaction, and 16
providing unified communication among the buyer, the realtor and 17
the mortgage originator. Thus, a simplified loan process is 18
provided for the buyer by the coordination between the realtor and 19
the mortgage originator due to the unified communication among 20
the buyer, the realtor and the mortgage originator. The buyer 21
receives, from the real estate commission received by the realtor, a 22
predetermined portion of money from either the purchase price of 23
the property or the loan amount. The realtor receives a portion of 24
the mortgage origination proceeds typically received by the 25
mortgage originator to compensate for the portion of the purchase 26
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price of the property and loan amount distributed to the buyer 1
from the real estate commission received by the realtor. The 2
buyer receives a predetermined portion of money from the 3
purchase price of the property and/or the loan amount, the realtor 4
receives the full amount of the predetermined real estate 5
commission for the sale he or she made and the mortgage 6
originator receives a proportionately smaller portion of the 7
mortgage origination proceeds. Marlow ¶’s 0032-0033. 8
07. Marlow describes the pre-existing process of the loan process 9
beginning with a formal meeting or telephone call with a real 10
estate agent or a prospective client, during which the mortgage 11
loan agent obtains basic information about the purpose of the loan 12
and explains the different types of loans and credit terms that are 13
available to the applicant. Loan agents answer questions about the 14
process and sometimes assist clients in filling-out the required 15
application. After a client completes the application, the loan 16
agent begins the process of analyzing and verifying the application 17
to determine the client's credit worthiness. Often, loan agents can 18
quickly access the client's credit history by computer and obtain a 19
credit score. This score represents the credit worthiness of a 20
person or business as assigned by a software program that makes 21
the evaluation. In cases where a credit history is not available or 22
where unusual financial circumstances are present, the loan agent 23
may request additional financial information from the client or, in 24
the case of commercial loans, copies of the company's financial 25
statements. With this information, loan officers who specialize in 26
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evaluating a client's credit worthiness, who are usually working 1
for the lender of the funds, would be asked to conduct a financial 2
analysis or other risk assessment of the potential client. This 3
additional information would be included as written comments in 4
the client's loan file, which is used to analyze whether the 5
prospective loan meets the lending institution's requirements. 6
Marlow ¶ 0014. 7
Freeman '285 8
08. Freeman '285 is directed an interactive information management 9
system generating a web page that includes a first section for 10
allowing a user to designate one or more criteria relating the 11
mortgage information stored in the database, and a second section 12
for displaying results of a database search performed by the 13
processor based on the designated search criteria. The search 14
results include information identifying one or more matching loan 15
records. Freeman '285 ¶ 0017. 16
09. When a client logs on, Freeman '285 automatically displays a 17
message requesting information or verification of information 18
required or otherwise considered of interest in acquiring or 19
otherwise managing the client's loan. The client responds by 20
entering this information into fields provided on the screen, by 21
sending a reply e-mail to a specified address, or any number of 22
other ways. Freeman '285 ¶ 0192. Requests for the verification of 23
an anomaly such as missing information or information which 24
does not match other records is old and well known to those of 25
ordinary skill in the financing arts as part of due diligence. 26
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04. McDermott 1
10. McDermott is directed to describing how IntraLinks' Fax-in 2
service increases loan transaction efficiency. McDermott: Title. 3
11. McDermott describes the pre-existing practice within the loan 4
market of handling communications and due diligence procedures 5
through faxing. Agent banks and related parties regularly 6
communicate via fax to gather the proper, signed documents to 7
syndicate or service a loan. IntraLinks’ new service, called Fax- in 8
will help expedite the completion of required documentation 9
assigned by agent banks to investors involved in a loan 10
transaction. Fax-in basically works like this: An agent bank sends 11
out a list of required documentation - accessible on the IntraLinks 12
workspace - that must be filled out and returned by the investor to 13
the bank via fax. To expedite the process, IntraLinks provides the 14
required documentation with a prepared cover letter for the 15
investor to print, fill out and send via fax. The sent fax will then 16
be transformed into a secure PDF file and sent directly to the 17
IntraLinks workspace, at which time the agent bank will be alerted 18
of the document's arrival to IntraLinks via electronic mail. 19
McDermott 1-2. 20
ANALYSIS 21
We are not persuaded by the Appellants’ argument that the Examiner 22
failed to provide clear articulation, with rational underpinning, to combine 23
the six references. Appeal Br. 14-15. First, there are five references. The 24
Examiner also provided administrative notice. Three of the secondary 25
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references are applied to describe a portion of the pre-existing loan practice. 1
FF 05, 07, and 11. Freeman '285 merely shows one of ordinary skill knew to 2
automate parts of the pre-existing practice. FF 09. Examiner’s 3
administrative notice merely describes what one of ordinary skill would 4
have known to be a predictable variant of the instruction on McDermott’s 5
fax, which is non-functional material in any event, which cannot distinguish 6
the claim over the art. 7
We are not persuaded by the Appellants’ argument that by providing 8
reasons for obviousness that are beyond the prior art, and by concluding that 9
it would be "obvious" to include the missing limitations, the Examiner was 10
making a finding of his own knowledge as one of ordinary skill in the art in 11
making this conclusion. Appeal Br. 16 and 18-20. The Examiner took 12
notice that one of ordinary skill in the financing arts knew that a fax cover 13
typically included instruction for the recipient and that such instructions for 14
financing transactions would frequently include directions to provide 15
documentation to verify submitted information. This is not information 16
personally known to the Examiner, but rather information that one of 17
ordinary skill knew. A review of the record shows no argument that one of 18
ordinary skill would not have known this, which is clearly because it is 19
really little more than common sense, and part of the shared experience of 20
almost everyone who ever obtained a mortgage. Again, in any event, the 21
textual contents of such a fax, perceptible only to the human mind, cannot 22
distinguish over the art. 23
We are not persuaded by the Appellants’ argument that McDermott’s 24
use of paper would change the principals of operation of the remaining 25
references. Appeal Br. 17. Examiner is not applying McDermott in toto, but 26
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only to show the pre-existing practice of using a fax to convey instructions. 1
Doing so would not change any principles in the remaining references. 2
CONCLUSIONS OF LAW 3
The rejection of claims 1, 4-7, 9, 13 and 14 under 35 U.S.C. § 103(a) as 4
unpatentable over Hu, Freeman '137, Marlow, Freeman '285, and 5
McDermott is proper. 6
The rejection of claims 2, 3, 8, and 15-18 under 35 U.S.C. § 103(a) as 7
unpatentable over Hu, Freeman '137, Marlow, Freeman '285, McDermott, 8
and Admitted Prior Art is proper. 9
The rejection of claim 10 under 35 U.S.C. § 103(a) as unpatentable over 10
Hu, Freeman '137, Bosch, and McDermott is proper. 11
The rejection of claims 11 and 12 under 35 U.S.C. § 103(a) as 12
unpatentable over Hu, Freeman '137, Bosch, McDermott, and Horn is 13
proper. 14
DECISION 15
The rejection of claims 1-18 is affirmed. 16
No time period for taking any subsequent action in connection with this 17
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 18
§ 1.136(a)(1)(iv) (2007). 19
20
AFFIRMED 21
22
23
MP 24