Ex Parte 5995947 et al

Patent Trial and Appeal Board

Jun 16, 2014

90009857 (P.T.A.B. Jun. 16, 2014)

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.
90/009,857 12/02/2010 5995947 2762-0003 8849
42624 7590 06/17/2014
DAVIDSON BERQUIST JACKSON & GOWDEY LLP
4300 WILSON BLVD., 7TH FLOOR
ARLINGTON, VA 22203
EXAMINER
CARLSON, JEFFREY D
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
06/17/2014 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 IMX, INC.
1

Patent Owner, Appellant
____________

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2

Technology Center 3900
____________

Before CAROLYN D. THOMAS, JOHN A. EVANS, and
J. JOHN LEE, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON APPEAL

1
IMX, Inc. is the real party in interest. App. Br. 1.
2
Issued November 30, 1999 to Stephen K. Fraser et al. (hereinafter the
“Fraser Patent”).
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STATEMENT OF THE CASE
The Patent Owner (hereinafter “Appellant”) appeals under 35 U.S.C.
§§ 134(b) and 306 from the Final Rejection of claims 1, 2, 7-12, 19-21, and
26-31. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. An Oral
Hearing was held on May 28, 2014.
We affirm-in-part.
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed October 21, 2013), the Answer (mailed
December 13, 2013), and the Reply Brief (filed February 14, 2014) for the
respective details. We have considered in this decision only those
arguments Appellant actually raised in the Briefs. Any other arguments
which Appellant could have made but chose not to make in the Briefs, are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).

Appellant’s Invention
Appellant’s invention relates to a method and system for trading loans
in real time by making loan applications, such as home mortgage loan
applications. A transaction server maintains a database of pending loan
applications and their statuses. Each party to the loan can search and modify
that database consistent with their role in the transaction, by requests to the
server from a client device identified with their role. See generally Fraser
Patent, Abstract.

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Claim 1 is illustrative of the claimed invention and reads as follows:

1. A method for processing loan applications, said method
including the steps of maintaining a database of pending loan
applications and their statuses at a database server, wherein each party
to a loan can search and modify that database consistent with their
role in the transaction by requests to said server from a client device
identified with their role.

The Examiner’s Rejection
The Examiner’s Answer cites the following prior art reference:
Davidson US 5,699,527 Dec. 16, 1997
(filed May 1, 1995)

1. Claims 1, 9-12, 19, 20, and 28-31 stand rejected under 35 U.S.C.
§ 102(e) as being anticipated by Davidson.
2. Claims 2, 7, 8, 10, 21, 26, 27, and 29 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Davidson in view of Official
Notice.

ANALYSIS
Claims 1, 9, and 10
Dispositive Issue 1: Under 35 U.S.C. § 102(e), did the Examiner err
in finding that Davidson discloses each party to a loan can search and
modify the database, as recited in claim 1?
Appellant contends that “the loan applicant creates a data file locally
that is transferred to the lending institution computer for further processing
by the lending institution such that the loan officers add data to the database,
not the loan applicant” (App. Br. 5).
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The Examiner finds that Davidson does not state “that the loan
officers add the applicant’s application data to the database. . . . Davidson
indicates that a loan applicant directly submits his application information
. . . into the system at institution computer (16) and stored in the loan
database (21) of that computer” (Ans. 15-16). The Examiner further states
that “[t]his is believed to indicate a process where a loan applicant is
responsible for a loan application being added to the database without the
use of an internal employee” (id. at 18). We agree with the Examiner.
For example, Davidson discloses that “[o]nce all of the information is
inputted and completed by the loan applicant, the LS program 1 creates a
loan data file at step 130 for transmission, at step 132, to the lending
institution computer 16. When the information is received at the lending
institution computer 16, the lending institution reviews the information . . .”
(col. 6, ll. 62-67). We agree with the Examiner that the claimed “database
server” reads on Davidson’s “lending institution’s master computer” (see
Ans. 2; see also col. 1, ll. 36-42), i.e., computer 16 which includes database
21 (see FIG. 2), because Davidson’s computer 16 is a computer with a
database that provides services to another computer (e.g., the loan
applicant’s computer).
Here, Davidson does not specifically state that the loan officer adds
data to the database, as proffered by the Appellant. Davidson merely
discloses that “[t]he computer system contains a commercial loan
application . . . which can be transmitted . . . directly to the loan officer in
charge of the application” (col. 4, ll. 10-15). However, Davidson also
discloses that the “loan applicant computer 11 may be directly connected
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electronically to the lending institution computer 16” (col. 6, ll. 7-8), and
that “the commercial lending process has become streamlined and automated
from the initial application to the final approval” (col. 3, ll. 54-56). In fact,
Davidson emphasizes the need to “minimize and/or eliminate the need for
excessive human involvement such as . . . opening and distributing
correspondence received from loan applicant . . .” (col. 4, ll. 21-27). In other
words, Davidson gives the loan applicant direct access to the lending
institution’s master computer 16, which includes the database 21, (see col. 1,
ll. 36-43) and emphasizes automating many aspects of the lending process so
as to eliminate the need for excessive human involvement in opening and
distributing loan applications. Furthermore, in Davidson, “[t]he system can
verify that the application is complete . . . much of the loan process is
automated to remove the human involvement” (col. 4, ll. 33-38). Again,
Davidson emphasizes that the review/verification process is automated.
Thus, Appellant has failed to show precisely where Davidson discloses that
only the loan officer adds the new loan application to the database or
similarly that the loan officer verifies whether the application is complete
prior to it being initially added to the database. Stated differently, we cannot
say, nor has Appellant shown, that Davidson is limited to the loan officer
adding the loan application into the database. Instead, the evidence supports
the Examiner’s findings that Davidson’s system can automatically perform
these features, i.e., modifying the database by storing applicant’s new loan
application into the database via the master computer 16, i.e., the database
server, when directed by the loan applicant.
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Appellant directs our attention to “step 76 - final determination” of
Davidson’s Fig. 5B as evidencing that the data file is not stored in the
database until after a final determination, i.e., that lending personnel store
the loan application into database 21 (see App. Br. 8). However, Davidson
expressly discloses that “[o]nce the loan data file is transmitted to the
lending institution computer 16 [by the loan applicant], the lending
institution computer 16 records the time and date of the transmission . . . The
loan data file then enters the lending institution computer network 25
typically comprising the plurality of PC’s 26. . . . Each site . . . then has
access to the loan file to perform a specific task” (col. 7, ll. 41-52). In other
words, the loan data file is first placed on the network 25 at the loan
applicant’s behest by the lending institution computer (id. Fig. 2), so that the
various personnel and/or departments can access the file via terminal 26 and
perform their respective duties/functions as shown in Fig. 5, e.g., loan
approval, security issues, final determination, etc. As the Examiner found,
Davidson also expressly discloses that the data file specifically resides in
database 21 for these loan processing steps (Ans. 21; see also Davidson, col.
8, ll. 36-60 (describing loan applicant’s monitoring of loan processing steps
by monitoring data file on database 21)). As such, while Davidson’s step 76
illustrates saving information in the database 21, this does not negate the
disclosure that the loan applicant previously caused the data file to be stored
on the database 21 via direct link to computer 16.
Furthermore, Davidson discloses that suitable passwords are used “so
that the loan applicant is only provided with access to that particular loan
applicant’s data file which is stored in the database 21 of the lending
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institution,” and the applicant can make corrections to such information as
shown in FIG. 4, e.g., provide missing/corrected data (see col. 8, ll. 44-51;
see also FIG. 4, steps 134, 136, and 138). As such, we find that Davidson’s
loan applicant not only has the ability to modify the database by transmitting
a new loan application directly to computer 16, i.e., the database server, but
also by modifying the data file in database 21 with corrected/missing
information by using a password. We further find unpersuasive Appellant’s
contention that the loan application could “be stored in an email system . . .”
(see App. Br. 7) because Appellant has failed to identify where Davidson
discloses such an embodiment.
For the above reasons, we sustain the Examiner’s 35 U.S.C. § 102(e)
rejection of independent claim 1, as well as the rejection of dependent claims
9 and 10 not separately argued by Appellant.

Claims 11 and 12
Dispositive Issue 2: Under 35 U.S.C. § 102(e), did the Examiner err
in finding that Davidson discloses that the database includes computed
values, as recited in claim 11?
Appellants contend that Davidson “does not provide any indication
that the ‘credit score’ is stored in the database as claimed” (App. Br. 10).
The Examiner finds that “[t]he claim merely states that the database
‘includes’ computed values” and does not require any step or feature
concerning computation of the value. The Examiner further finds that
“Davidson’s Financial statements, financial data, and credit scoring [3:58-
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60] indeed represent determined or computed values . . .” (Ans. 24). We
agree with the Examiner.
As noted supra, the loan application is stored in database 21.
Davidson further discloses that information provided on the form transmitted
to computer 16 and stored in database 21 includes income statements,
balance sheets, business ratios, etc. (see col. 6, ll. 26-33), and the “loan
applicants (the loan applicant) need only enter the required raw data – the
financial statements and analysis are automatically generated by the system”
(col. 4, ll. 4-7). In other words, Davidson’s database includes the loan
application which includes forms having computed values.
For the above reasons, we sustain the Examiner’s 35 U.S.C. § 102(e)
rejection of claim 11, as well as claim 12 not separately argued by
Appellant.

Claims 19, 20, and 28-31
Dispositive Issue 3: Under 35 U.S.C. § 102(e), did the Examiner err
in finding that Davidson discloses a transaction server being responsive in
real time to requests, for searching and modifying, the database, as set forth
in claim 19?
Appellant contends that “[t]he Office Action also has not proven that
Davidson teaches a ‘transaction server being responsive in real time to
request from parties’” (App. Br. 10).
The Examiner finds that “claim 19 uses the term ‘parties’, but neither
mentions nor requires a borrower applicant. Two lending employees can
meet the claim language of ‘parties to said pending loan applications’ where
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each employee processes different loan applications” (Ans. 25). We agree
with the Examiner.
Specifically, claim 19 recites, inter alia, “said transaction server being
responsive in real time to requests from parties to said pending loan
applications” (see claim 19). The Examiner concluded, and we agree, that
claim 19 does not necessarily require being responsive in real time to
requests from all parties, as the claim language reads on any parties, e.g.,
two lending officials, each of whom represents a party in two different loans
(see Ans. 25). Here, Appellant admits that “some information in general
may be available internally to bank personnel ‘substantially instantly . . .’”
(App. Br. 10; see also Davidson, col. 4, ll. 28-29). In other words,
Davidson’s lending officials can access the database 21 via computer
network 25 and search and modify the database 21 “substantially instantly”
(see Davidson, Fig. 2).
We find that each of the above noted scenarios discloses a transaction
server, i.e., computer 16, being responsive in real time to requests from
parties to pending loan application, as set forth in claim 19. For the above
reasons, we sustain the Examiner’s 35 U.S.C. § 102(e) rejection of claim 19,
as well claims 20, and 28-31 not separately argued by Appellant.

Claims 2 and 21
Dispositive Issue 4: Under 35 U.S.C. § 103(a), did the Examiner err
in finding that Davidson in view of Official Notice teaches and/or suggest
home mortgage loan applications?
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Appellant contends that “there is no evidence to support such an
assertion . . . Davidson does not discuss mortgages at all, only loans . . .”
(App. Br. 15).
The Examiner finds that Appellant “fails to point out the supposed
errors for the asserted Notice. . . . the traverse was inadequate” (Ans. 31).
We agree with the Examiner.
In reviewing the record, Appellant has not traversed the Examiner's
finding by stating that the purported well-known fact is not considered to be
common knowledge or well-known in the art. See MPEP § 2144.03(C) (“To
adequately traverse such a finding, an applicant must specifically point out
the supposed errors in the examiner's action, which would include stating
why the noticed fact is not considered to be common knowledge or well-
known in the art. See 37 CFR 1.111(b).”). An adequate rebuttal of the
Examiner's taking of Official Notice must contain sufficient information or
argument to create on its face a reasonable doubt regarding the
circumstances justifying the Examiner's notice of what is well known to one
of ordinary skill in the art. See In re Boon, 439 F.2d 724, 728 (CCPA 1971).
Here, Appellant has done nothing more than allege the impropriety of
the Examiner's taking of Official Notice, purportedly because the prior art of
record does not teach or suggest the disputed limitation, i.e., a home
mortgage loan application. However, Appellant has not specifically pointed
out the supposed errors in the noticed fact, i.e., both home mortgage loan
applications and business loan applications require similar interactions and
information exchange. Davidson’s loan processing systems could be
adapted for home mortgages. We find Appellant's statement of no evidence
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in support of the Examiner's taking of Official Notice was inadequate by
failing to state why the taking of Official Notice was improper, and why the
noticed fact was not well known.
For the above reasons, we sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claim 2, as well as claim 21 for similar reasons.

Claims 7, 8, 26, and 27
Dispositive Issue 5: Under 35 U.S.C. § 103(a), did the Examiner err
in finding that Davidson in view of Official Notice teaches and/or suggest
that the lender can search the database for particular desired types of loans,
as set forth in claim 7?
Appellant contends that “it was requested that the next Office Action
provide evidence . . . because such an allegation ignores . . . the Office
Action has provided no evidence, only argument . . .” (App. Br. 15-16).
Here, in response to the Official Notice set forth by the Examiner,
Appellant traversed the Official Notice by both traversing the noticed fact on
its merit and by specifically requesting documentary evidence in the next
Office Action (see Response to Non-Final dated February 12, 2013). Thus,
Appellant has made an adequate traversal on the merits, and repeated this
traversal in the Appeal Brief. Accordingly, the Examiner was required to
provide evidence in support of the Official Notice in response to the proper
traversal. MPEP 2144.03(C) (citing 37 C.F.R. § 1.104(c)(2) and In re
Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001)). The Examiner has failed to
do so.
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For the above reasons, we reverse the Examiner’s 35 U.S.C. § 103(a)
rejection of claim 7, as well as claims 8, 26, and 27 for similar reasons.

CONCLUSION OF LAW
Based on the analysis above, we conclude that the Examiner did not
err in rejecting claims 1, 9-12, 19, 20, and 28-31 as being anticipated under
35 U.S.C. § 102(e), nor claims 2 and 21 as being unpatentable under
35 U.S.C. § 103(a).
However, we conclude that the Examiner erred in rejecting claims 7,
8, 26, and 27 as being unpatentable under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s decision rejecting claims 1, 9-12, 19, 20,
and 28-31 as being anticipated under 35 U.S.C. § 102(e), and claims 2 and
21 as being unpatentable under 35 U.S.C. § 103(a).
We reverse the Examiner’s decision rejecting claims 7, 8, 26, and 27
as being unpatentable under 35 U.S.C. § 103(a).

TIME PERIOD FOR RESPONSE

Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

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For Patent Owner:

Michael R. Casey
DAVIDSON BERQUIST JACKSON & GOWDEY LLP
4300 Wilson Blvd.,
7
th
Floor
Arlington, VA 22203

For Third Party Requester:

Susanne T. Jones
Jorge I. Negron-Garcia
O’BRIEN JONES, PLLC
1951 Kidwell Drive
Suite 550B
Tysons Corner, VA 22182

ELD