Ex Parte Comstock

Board of Patent Appeals and Interferences

Oct 21, 2011

11214587 (B.P.A.I. Oct. 21, 2011)

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.
11/214,587 08/30/2005 Thomas F. Comstock 5732-000001 6122
7590 10/21/2011
THOMAS F. COMSTOCK
1634 MODELAND ROAD
SARNIA, ON N7T 7H4
CANADA
EXAMINER
AMELUNXEN, BARBARA J
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
10/21/2011 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 THOMAS F. COMSTOCK
____________

Appeal 2010-003112
Application 11/214,587
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-003112
Application 11/214,587

2
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the
final rejection of claims 21-35 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellant’s claimed invention is directed to a method of
financing a purchase or a lease of a depreciating asset (Spec. [0006]). Claim
31, reproduced below, is representative of the subject matter on appeal.

31. A method of electronically determining a financing
arrangement between a lender, a purchaser and a dealer on a
computer, the method comprising:
electronically determining a value of an asset that depreciates
over time with the computer;
electronically preparing the financing arrangement with the
computer for purchase or lease of said asset from the dealer, wherein
the dealer is designated a guarantor in the financing arrangement;
electronically determining a value of an insurance policy,
wherein said insurance policy is at least adapted to reimburse costs
associated with the financing arrangement when said asset is
repossessed.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Monticciolo US 2001/0037274 A1 Nov. 1, 2001
Vagim, III US 2003/0041019 A1 Feb. 27, 2003
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Camping US 2005/0235008 A1 Oct. 20, 2005
Code of Federal Regulation 12 C.F.R. 213.2(n) as per provisions of
this part 213 that appear at 61 Fed. Reg. 52258, Oct. 7, 1996, obtained
Oct. 28, 2008.

Merriam-Webster Online Dictionary, 10th Ed., and “reinsurance”
obtained May 8, 2008.

The following rejections are before us for review1:
1. Claims 21-30 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
2. Claims 21-35 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
3. Claims 31, 32, and 34-35 are rejected under 35 U.S.C. § 102(b)
as being anticipated by Vagim, III.
4. Claims 21, 23, 25, 27, and 29 are rejected under 35 U.S.C.
§ 103(a) under Vagim III, Monticciolo and Official Notice.
5. Claims 22, 24, 26, and 28 are rejected under 35 U.S.C. § 103(a)
under Vagim III, Monticciolo and Official Notice, and Camping.
6. Claim 30 is rejected under 35 U.S.C. § 103(a) under Vagim III,
and Monticciolo.
7. Claim 33 is rejected under 35 U.S.C. § 103(a) under Vagim III
and Code of Federal Regulation 12 C.F.R. 213.2(n) as per provisions of this
part 213 that appear at 61 Fed. Reg. 52258.

1 The Examiner has objected to claim 27 (Ans. 6). This objection is not
subject matter reviewable by the Board of Patent Appeals and Interferences
but rather petitionable subject matter before the Director of the U.S.P.T.O.
See M.P.E.P. 706.01.
Appeal 2010-003112
Application 11/214,587

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THE ISSUES
With regard to the rejection under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement the issue turns on
whether the Examiner has presented a prima facie case and considered the
Wands factors.
With regard to the rejection under 35 U.S.C. § 112, second paragraph,
the issue turns on whether for the rejected claims whether those skilled in the
art would understand what is claimed when the rejected claims are read in
light of the specification.
With regards to the rejections under 35 U.S.C. § 102(b) and 35 U.S.C.
§ 103(a) the issue turns on whether the Examiner has shown the prior art to
disclose the cited claim limitations.

FINDINGS OF FACT
We find the following enumerated findings of fact (FF) are supported
at least by a preponderance of the evidence:2
FF1. Vagim, III has disclosed method and system for deal structuring for
automobile dealers (Title).
FF2. Vagim, III at [0090-0092] and [0108] does not disclose “electronically
determining a value of an insurance policy, wherein said insurance policy is
at least adapted to reimburse costs associated with the financing arrangement
when the asset is repossessed”.

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 11/214,587

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FF3. Vagim, III at Fig. 13, [0091] and [0108] does not disclose
“electronically determining a first value with the computer, wherein said
first value defines a capitalized cost associated with the purchase or the lease
of a vehicle”.
FF4. Monticciolo at Figs. 1-2, [0010], and [0031]-[0034] does not disclose
“wherein said dealer is designated a beneficiary of said insurance policy”.

ANALYSIS
Rejections under 35 U.S.C. § 112, first paragraph
The Examiner has rejected claims 21-30 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement. The
Examiner asserts that claim 21 has no support for “electronically
determining a finance contract” and that claim 30 has no support for
“arranging a financing contract” in the Specification (Ans. 6-7).
The PTO bears the initial burden when rejecting claims for lack of
enablement.
When rejecting a claim under the enablement
requirement of section 112, the PTO bears an
initial burden of setting forth a reasonable
explanation as to why it believes that the scope of
protection provided by that claim is not adequately
enabled by the description of the invention
provided in the specification of the application;
this includes, of course, providing sufficient
reasons for doubting any assertions in the
specification as to the scope of enablement. If the
PTO meets this burden, the burden then shifts to
the applicant to provide suitable proofs indicating
that the specification is indeed enabling.

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In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re
Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)).
It is by now well-established law that the test for compliance with the
enablement requirement in the first paragraph of 35 U.S.C. § 112 is whether
the disclosure, as filed, is sufficiently complete to enable one of ordinary
skill in the art to make and use the claimed invention without undue
experimentation. In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
“Enablement is not precluded by the necessity for some experimentation . . ..
However, experimentation needed to practice the invention must not be
undue experimentation. The key word is ‘undue,’ not ‘experimentation.’”
In re Wands, 858 F.2d at 736-737.
To evaluate whether a disclosure would require undue
experimentation, the Federal Circuit has adopted the following factors to be
considered:
(1) The quantity of experimentation needed to make or use the
invention based on the content of the disclosure;
(2) The amount of direction or guidance presented;
(3) The existence of working examples;
(4) The nature of the invention;
(5) The state of the prior art;
(6) The relative skill of those in the art;
(7) The level of predictability in the art; and
(8) The breadth of the claims.
In re Wands, 858 F.2d at 737. The examiner’s analysis must consider all the
evidence related to each of these factors, and any conclusion of
nonenablement must be based on the evidence as a whole. Here, the
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Examiner has not considered the Wands factors and a prima facie case has
not been established. For this reason the rejections made under 35 U.S.C
§ 112, first paragraph, as failing to comply with the enablement requirement
is not sustained.

Rejections under 35 U.S.C. § 112, second paragraph
The Examiner has rejected claims 21-35 under 35 U.S.C. § 112,
second paragraph, as being indefinite (Ans. 8-11).
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations
omitted).
We have reviewed the portions of the claims which the Examiner has
asserted as being indefinite for failing to particularly point out and distinctly
claim the subject matter which the Appellant regards as the invention in the
Answer at 8-11 but disagree with these contentions.
The Examiner argues that terms “electronically determining a finance
contract” and “determining said finance contract” in claim 21 are not
understood (Ans. 8) but support for these terms is given for example at
[0006] and [0036] and one of ordinary skill in the art would understand what
is claimed. The Examiner argues that the term “said finance contract
establishes a dealer” is not understood but this term is clear in light of for
example paragraph [0022] of the Specification and one of ordinary skill
would understand what is claimed. With regards to claim 22 the claimed
“transferring step” is clear and understood in light of paragraph [0042] of the
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Specification and one of ordinary skill would understand what is claimed.
With regards to claim 32 the term “credit worthiness” is clear in light of
paragraph [0030] of the Specification and one of ordinary skill would
understand what is claimed. Similarly, the common terms “financial
arrangement”, “associated with”, and the limitations of claim 23 would be
understood by one of ordinary skill in the art in light of the Specification.
The rejections made under 35 U.S.C. § 112, second paragraph are therefore
not sustained.

Rejections under 35 U.S.C. § 102(b)
Claim 31 requires the limitation for “electronically determining a
value of an insurance policy, wherein said insurance policy is at least
adapted to reimburse costs associated with the financing arrangement when
said asset is repossessed” and the Examiner has asserted that this claim
limitation is shown in Vagim, III at [0090-0092] and [0108] (Ans. 12).
Claim 32 requires “electronically determining a first value with the
computer, wherein said first value defines a capitalized cost associated with
the purchase or the lease of the vehicle” and “electronically…a cost of an
insurance policy based on at least said first value and said second value.”
and the Examiner has asserted this is shown in Vagim, III at Fig. 13, [0090-
0092], and [0108] (Ans. 13).
However, in Vagim, III, ¶¶[0090-0092, 0108], there is disclosed a
discussion of financing of a loan based on Kelley Bluebook values, but
nothing is disclosed about factoring into the financing, the value of an
insurance policy. While such a feature may be obvious, the instant rejection
is one based on anticipation.
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For this reason the rejection made under 35 U.S.C. § 102(b) are not
sustained.

Rejections under 35 U.S.C. § 103(a)
Claim 21 requires the limitation stating “wherein said dealer is
designated as a beneficiary of said insurance policy” and the Examiner has
determined that the cited portion of the claim is a “wherein clause” which “is
inclusive of a mental step” and therefore is given no patentable weight (Ans.
17). We disagree with this claim construction and find to the cited phrase to
be a limitation to the claim not responded to by the Examiner.
Claim 30 also requires “wherein said dealer is designated a
beneficiary of said insurance policy” and the Examiner has asserted that this
is disclosed by Monticciolo at Figs. 1-2, [0010], and [0032]-[0034] (Ans.17
and 30). Monticciolo at Figs. 1-2, [0010], and [0032]-[0034] does not
disclose this cited claim limitation (FF4) and the rejection of claims 21 and
30 and their dependent claims is therefore not sustained. The Examiner also
found that the finance contract including an insurance policy is non-
functional descriptive material. (Answer 30). We disagree with the
Examiner because claim 30 further goes on to describe its function in terms
of the designated guarantor of the finance contract, thus giving it function.

CONCLUSIONS OF LAW
We conclude that Appellant has shown that the Examiner erred in
rejecting: claims 21-30 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement; claims 21-35 under 35 U.S.C.
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§ 112, second paragraph, as being indefinite; claims 31, 32, and 34-35 under
35 U.S.C. § 102(b) under Vagim, III; and claims 21-30 and 33 under 35
U.S.C. § 103(a) as listed in the Rejection section above.

DECISION
The Examiner’s rejection of claims 21-35 is reversed.

REVERSED

MP