12258511 (B.P.A.I. Apr. 23, 2012)

Ex Parte Banerjee et al

Board of Patent Appeals and InterferencesApr 23, 2012

12258511 (B.P.A.I. Apr. 23, 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. 12/258,511 10/27/2008 Sudeshna Banerjee 104-017 9230 72822 7590 04/24/2012 Weiss & Arons, LLP 1540 Route 202, Suite 8 Pomona, NY 10970 EXAMINER ABDI, KAMBIZ ART UNIT PAPER NUMBER 3694 MAIL DATE DELIVERY MODE 04/24/2012 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 ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte SUDESHNA BANERJEE, ROBERT CARUSO, MICHAEL KELLY, KIM BARBOUR, DEBASHIS GHOSH, ROBERT MAULDIN, ROBERT HUBER ESHLEMAN, and TIMOTHY O’BRIEN ____________ Appeal 2011-004679 Application 12/258,511 Technology Center 3600 ____________ Before ANTON W. FETTING, BIBHU R. MOHANTY, and MEREDITH C. PETRAVICK, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-004679 Application 12/258,511 2 STATEMENT OF THE CASE The Appellants seek our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-2 and 4-28 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b) (2002). Oral arguments were presented on April 19, 2012. SUMMARY OF THE DECISION We AFFIRM. THE INVENTION The Appellants’ claimed invention is directed an apparatus and method for pre-approving collateral for a property purchase loan (Spec. [012]). Claim 1, reproduced below with the numbering in brackets added, is representative of the subject matter on appeal. 1. One or more computer-readable media storing computer-executable instructions which, when executed by a processor on a computer system, perform a method for providing financing for the sale of a property, the financing being provided by a financial institution, the method using an electronic information processing platform, the method comprising: [1] storing information corresponding to an application received from a seller for pre-approval of a loan amount relating to the purchase of the property; [2] and before the property is listed for sale, [3] storing information corresponding to a certification certifying that the pre-approved loan amount will be granted to a qualified buyer by the financial institution. Appeal 2011-004679 Application 12/258,511 3 THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Freeman US 2007/0050285 A1 Mar. 1, 2007 Rebchook, John; Home Closing Made Simple - Denver Company's Job is to Eliminate Problems that can Derail the Sale, Denver Rocky Mountain News, June 23, 2000, p. 2B The following rejections are before us for review: 1. Claims 1-2 and 4-26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Rebchook and Freeman. 2. Claims 2, 4, 6-25, and 27-28 are rejected under 35 U.S.C. § 103(a) as unpatentable over Rebchook and Official Notice. THE ISSUES With regards to claim 1 and its dependent claims the issue turns on whether the argued claim limitation is non-functional descriptive material. With regard to claim 10 and its dependent claims the issue turns on whether the argued claim limitation is disclosed or known in the art. FINDINGS OF FACT We find the following enumerated findings of fact (FF) are supported at least by a preponderance of the evidence:1 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2011-004679 Application 12/258,511 4 FF1. Rebchook has disclosed a method in which a pre-appraisal of a home price is done before the sale. The price of the home can be adjusted up or down based on the appraisal. The method is performed by SecureClose. FF2. Freeman has disclosed an interactive loan information importing and editing web based system (Title). FF3. Freeman has disclosed the system generates a hierarchy of web pages for allowing mortgage brokers, lenders, and other personnel to track and manage each stage of acquiring a mortgage (Abstract). FF4. Freeman in Figure 1A shows that the system includes a processor, mortgage information database, and software modules. A network and server is connected to parties including the selling agent, listing agent, an appraiser, clients (borrowers), and lenders. FF5. Freeman in Figure 4C shows the system includes appraisal agent detailed information 274. FF6. Freeman in Figure 7 shows a document showing whether the loan application was incomplete, approved, or declined. ANALYSIS Claims rejected under Rebchook and Freeman The Appellants argue that the rejection of claim 1 is improper because the claim requires “storing information corresponding to a certification certifying that the pre-approved loan amount will be granted to a qualified buyer by the financial institution” and that this is not shown in the prior art (Br. 5-7, Reply Br. 2-4). Appeal 2011-004679 Application 12/258,511 5 In contrast, the Examiner has determined that rejection of record is proper and the cited step is directed not to a step of certification process but rather to a step of “storing information” (Ans. 3-4, 21-22). We agree with the Examiner. Both claim limitations [1] and [3] cited above are directed to storing information. The contents of that information or data is non-functional descriptive material and not afforded patentable weight. The PTO should not give patentable weight to descriptive material absent a new and unobvious functional relationship between the descriptive material and the substrate. See In re Gulack, 703 F.2d 1381, 1386 (Fed. Cir. 1983). See also In re Ngai, 367 F.3d 1336, 1338 (Fed. Cir. 2004); In re Lowry, 32 F.3d 1579, 1583-84 (Fed. Cir. 1994). Rebchook has disclosed that a pre-appraisal is performed (FF1) which would require that information be received from the seller of the house in order to perform the appraisal. This information would be stored in some manner before the property was listed for sale so the parties could see it. Regardless, Freeman also shows that appraiser may be connected to the computer network system which also includes a database (FF4) for storage of information. For these reasons the rejection of claim 1 is sustained. The Appellants argue that the rejection of claim 10 is improper because the claim requires an electronic grant for collateral approval which represents a grant of collateral approval from a financial institution (Br. 7, Reply Br. 4). Freeman in Figure 7 shows a document showing whether the loan application was incomplete, approved, or declined (FF6) in the system which meets this cited claim limitation. For these reasons the rejection of claim 10 and the remaining dependent claims which were not separately argued is sustained. Appeal 2011-004679 Application 12/258,511 6 Claims rejected under Rebchook and Official Notice The Appellants argue that the rejection of claim 10 is improper because the claim requires an electronic grant for collateral approval which represents a grant of collateral approval from a financial institution (Br. 9:1- 3, Reply Br. 5). In contrast, the Examiner has determined that rejection of record is proper (Ans. 15). We agree with the Examiner. The argued claim limitation drawn to an electronic grant for collateral approval that represents a grant of collateral approval from a financial institution and which is met by a simple loan being approved before a house is sold and which is known in the art. Freeman in Figure 7 for example shows a document showing whether the loan application was incomplete, approved, or declined (FF6). For these reasons the rejection of claim 10 and the remaining dependent claims which were not separately argued is sustained. CONCLUSIONS OF LAW We conclude that Appellants have not shown that the Examiner erred in rejecting claims as listed in the Rejection Section above. DECISION The Examiner’s rejection of claims 1-2 and 4-28 is sustained. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2011-004679 Application 12/258,511 7 AFFIRMED MP