Ex Parte Burns

Board of Patent Appeals and Interferences

Feb 23, 2007

09603510 (B.P.A.I. Feb. 23, 2007)

The opinion in support of the decision being entered today was not written
for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte ARTHUR DALE BURNS
___________

Appeal 2006-2388
Application 09/603,510
Technology Center 1700
___________

Decided: February 23, 2007
___________

Before MURRIEL E. CRAWFORD, ROBERT E. NAPPI and ANTON W.
FETTING, Administrative Patent Judges.
ANTON W. FETTING, Administrative Patent Judge.
DECISION ON APPEAL

This appeal involves claims 1-22, the only claims pending in this application.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 134.

We REVERSE and ENTER A NEW GROUND OF REJECTION
PURSUANT TO 37 CFR § 41.50(b).

Appeal Number: 2006-2388
Application Number: 09/603,510

BACKGROUND

The appellant’s invention relates to a student loan consolidation qualification
system. An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below.
1. A computer system for student loan consolidation qualification,
comprising:
an input module embodied in software in said computer system and
associated with an Internet site, that presents at least one page to a
loan applicant to assist said loan applicant in providing personal and
student loan information pertaining to a plurality of student loans
made to said loan applicant; and
a qualification module embodied in software in said computer system
and associated with said input module, that assesses said personal
information to determine a personal qualification of said loan
applicant and assesses said student loan information pertaining to said
plurality of student loans to determine a loan qualification of said loan
applicant, said qualification module qualifying said loan applicant and
informing said loan applicant and a loan consolidator only if said
personal qualification and said loan qualification are positive.
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Appeal Number: 2006-2388
Application Number: 09/603,510

PRIOR ART
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Mottola US 5,745,885 Apr. 28, 1998
Tengel US 5,940,812 Aug. 17, 1999
Levine US 6,233,566 B1 May 15, 2001
(Mar. 19, 1999)
We also make the following art of record.
General Accounting Office, Health, Education and Human Services Division,
Student Loans: Improvements in the Direct Loan Consolidation Process,
GAO/HEHS-99-19R, 26p. 11/10/1998 (GAO)

REJECTION
Claims 1-22 stand rejected under 35 U.S.C. § 103(a) as obvious over Tengel,
Levine and Mottola.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellant regarding the above-noted rejection, we make reference to the
examiner's answer (mailed February 9, 2006) for the reasoning in support of the
rejection, and to appellant’s brief (filed December 5, 2005) and reply brief (filed
April 10, 2006) for the arguments thereagainst.
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Appeal Number: 2006-2388
Application Number: 09/603,510

OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellant’s specification and claims, to the applied prior art references, and to
the respective positions articulated by the appellant and the examiner. As a
consequence of our review, we make the determinations that follow.

Claims 1-22 rejected under 35 U.S.C. § 103(a) as obvious over Tengel, Levine and
Mottola.
We note that the appellant argues these claims as a group. Accordingly, we
select claim 1 as representative of the group.
The issues under contention are
• Whether the art describes a page to a loan applicant to assist in providing
personal and student loan information pertaining to student loans.
• Whether the art describes software that assesses personal information to
qualify the applicant and the student loans.
• Whether the art describes informing the loan applicant and a loan
consolidator only if the applicant and the loans qualify.
The appellant argues that Tengal does not address student loans or loan
consolidation, that Levine does not overcome these shortcomings, and that
Mottola, although directed toward student loans, has no description of loan
consolidation (Br. 7-11; Reply Br. 2-3).
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Appeal Number: 2006-2388
Application Number: 09/603,510

The facts pertinent to these issues are:
Tengal describes a page to a loan applicant to assist in providing personal and
outstanding loan information pertaining to existing loans
This loan application form asks the potential borrower to enter various
information about the borrower such as the loan product the borrower
is applying for, the gross income of the borrower, current monthly
debt payments by the borrower, and so on.
(Col. 8, Lines 50-58).
Tengal describes software that assesses personal information to qualify the
applicant and the loans.
If the borrower attributes provided by the potential borrower and the
credit bureau are within the loan acceptance criteria as specified by
the lender for an offered loan, then that loan is available to the
potential borrower. On the other hand, if the borrower attributes are
outside the loan acceptance criteria, then that loan is not available to
the potential borrower.
(Col. 9, Lines 23-29).
Tengal describes informing the loan applicant and a loan provider only if the
applicant and the loans qualify.
The rankings of best loans are displayed to the potential borrower on
the screen . . . the loan origination system of the present invention
automatically generates a loan application from the borrower
attributes of the potential borrower (step 220). This loan application is
then sent via the global telecommunications network to that lender for
loan approval.
(Col. 9, Line 55 – Col. 10, Line 11).
Levine describes, as background, loan consolidation of high-loan-to-value
(HLTV) loans typically obtained by consumers using home equity. (Col. 1, Lines
40-52).
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Appeal Number: 2006-2388
Application Number: 09/603,510

Levine describes the motivation for consolidating loans as lowering the
borrower’s monthly payments and repaying debts more quickly, because interest
on home equity loans may be tax deductible and the interest rate on home equity
loans may be lower than the loans that are being consolidated. (Col. 2, Lines 1-12).
Levine is directed toward a system for trading financial products. (Col. 1,
Lines 12-15).
Levine describes student loans as a species of the genus of loans its system
may trade. (Col. 7, Lines 30-38).
Mottola describes a system for consolidating the individual student loans of a
number of debtors into a unit trust (Col. 3, Lines 39-66).
None of the references, Tengel, Levine or Mottola, describe consolidating
plural student loans owed by a debtor or communicating qualifying results to a
consolidator.
Thus, we must conclude that, although Tengal describes a page to a loan
applicant to assist in providing personal and outstanding loan information
pertaining to existing loans; software that assesses personal information to qualify
the applicant and the loans; and informing the loan applicant and a loan provider
only if the applicant and the loans qualify, none of the references describe
consolidating plural student loans owed by a debtor or communicating qualifying
results to a consolidator. Therefore the examiner has not made a prima facie case
for obviousness because all of the claimed elements have not been shown in the art
applied.
Accordingly we do not sustain the examiner's rejection of claims 1-22 under 35
U.S.C. § 103(a) as obvious over Tengel, Levine and Mottola.
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Appeal Number: 2006-2388
Application Number: 09/603,510

NEW GROUND OF REJECTION UNDER 37 CFR § 41.50(b)
Pursuant to 37 CFR § 41.50(b), we enter the following new ground of
rejection:
Independent claims 1, 9 and 16 are rejected under 35 U.S.C. § 103 as obvious
over Tengal and GAO.
Tengal describes a page to a loan applicant to assist in providing personal and
outstanding loan information pertaining to existing loans; software that assesses
personal information to qualify the applicant and the loans; and informing the loan
applicant and a loan provider only if the applicant and the loans qualify (See facts
pertinent to the issues above). GAO describes the process of consolidating plural
student loans on p. 5, including the steps in which:
• The borrower lists each loan to consolidate.
• A clearing house, Electronic Data Systems (EDS), qualifies the borrower
and the loans by contacting each of the lenders.
• The clearing house, EDS, transmits data to the consolidator only after all of
the data has been qualified by paying off the underlying loans.
Thus, GAO describes consolidating plural student loans owed by a debtor or
communicating qualifying results to a consolidator. It would have been obvious to
a person of ordinary skill in the art to have applied Tengel’s automation of loan
origination to GAO’s student loan consolidation process for Tengel’s taught
advantages of automation.
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Appeal Number: 2006-2388
Application Number: 09/603,510

CONCLUSION
To summarize,
• The rejection of claims 1-22 under 35 U.S.C. § 103(a) as obvious over
Tengel, Levine and Mottola is not sustained.
• Pursuant to 37 CFR § 41.50(b), we enter the following new ground of
rejection
o Independent claims 1, 9 and 16 are rejected under 35 U.S.C. § 103 as
obvious over Tengal and GAO.
This decision contains a new ground of rejection pursuant to 37 CFR §
41.50(b). 37 CFR § 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
37 CFR § 41.50 (b) also provides that the appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the following two
options with respect to the new ground of rejection to avoid termination of the
appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in which event
the proceeding will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be reheard under § 41.52 by
the Board upon the same record . . . .
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a)(1)(iv).
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Appeal Number: 2006-2388
Application Number: 09/603,510

REVERSED
and
NEW GROUND OF REJECTION PURSUANT TO 37 CFR § 41.50(b)

MURRIEL E. CRAWFORD )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ROBERT E. NAPPI ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ANTON W. FETTING )
Administrative Patent Judge )

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Appeal Number: 2006-2388
Application Number: 09/603,510

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