Ex Parte Daum

Patent Trial and Appeal Board

Apr 25, 2016

12101653 (P.T.A.B. Apr. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/101,653 04/1112008
112006 7590 04/27/2016
Graham Curtin, P.A.
4 Headquarters Plaza
Morristown, NJ 07962
FIRST NAMED INVENTOR
Steven B. Daum
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
DAU0002-01CP 8648
EXAMINER
MILEF, ELDA G
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
04/27/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
GCIPdocketing@grahamcurtin.com
patent@grahamcurtin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN B. DAUM
Appeal2014-000350
Application 12/101,653
Technology Center 3600
Before HUBERT C. LORIN, BIBHU R. MOHANTY, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEivIENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1, 2, 6, 8, 9, 13-16, and 20. We have jurisdiction
under 35 U.S.C. § 6(b).
STATEMENT OF THE DECISION
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed June 7,
2013), Reply Brief ("Reply Br.," filed Sep. 30, 2013), the Examiner's
Answer ("Ans.," mailed July 31, 2013), and the Final Rejection ("Final
Act.," mailed Jan. 10, 2013).
2 Appellant identifies the real party in interest as Steven Daum (App. Br. 3).
Appeal2014-000350
Application 12/101,653
CLAHvIED TI'-JVENTION
The claimed invention provides a method and system "for providing a
property owner with a consideration in exchange for the right to refer a real
estate broker for the future sale of the property by the property owner."
(Spec. i-f 5). Claims 1 and 13 are independent and recite substantially similar
subject matter (see App. Br. 12). Claim 1 is illustrative of the subject matter
on appeal.
1. A method for an owner of a property to sell the property,
compnsmg:
the owner making an application by applying to a party via
a computer interface for a consideration for committing to sell
the property with one of a plurality of real estate brokers stored
in a computer processing system associated with the party;
the computer processing system receiving the application
over the computer interface and qualifying the owner before
providing the consideration to the owner by a credit check,
determining a value of the property, by determining a current
loan to value associated with a loan on the property, by verifying
the identity of the owner and by a title check to verify that the
owner has proper title;
storing data related to a commitment by the owner to sell
the property with the one of the plurality of real-estate brokers
on the computer processing system; and
the party providing the consideration to the owner through
the computer processing system after qualifying the owner and
before the property is sold, wherein the compensation is based
on a value of the property.
App. Br. 15, Claims App.
REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Ashenmil
Painter
US 6,615,187 Bl
US 2004/0205019 Al
2
Sept. 2, 2003
Oct. 14, 2004
Appeal2014-000350
Application 12/101,653
Schutzer
Harrington
US 6,873,974 Bl
US 7 ,440,926 B2
ivfar. 29, 2005
Oct. 21, 2008
Hagerty, James R., Home Buyers Get Gifts for Finding A Broker
Online, (Wall Street Journal, Eastern edition, Dec. 9, 2004) (hereinafter
"Hagerty")
The following rejections are before us for review:
I. Claims 1, 2, 13, 14, 16, and 20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Harrington, Ashenmil, and
Painter.
II. Claims 6, 8, and 9 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Harrington, Ashenmil, Painter, and
Hagerty.
III. Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Harrington, Ashenmil, Painter, and Schutzer.
ANALYSIS
Rejection I
Claims 1, 2, 13, 14, 16, and 20
Appellant contends that "claims 1, 2, 13, 14, 16, and 20 are not taught
or suggested by the cited references because there is not teaching or
suggestion of 'qualifying the owner before providing the consideration to the
owner' in the manner required by the claims" (App. Br. 11 ). According to
Appellant, Painter "makes it clear that it is qualifying borrowers of money,
not owners of home properties, as required by claim 1" (id. at 12). "Thus, at
most, Painter teaches and suggests qualifying a borrower, such as a home
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Application 12/101,653
buyer seeking a mortgage to buy a house .... [not] qualifying owners of
home properties" (id.).
The Examiner rather relies on Harrington, not Painter, for disclosing
the "homeowner" of claim 1 (see, e.g., Ans. 3 ("Harrington teaches a
homeowner to receive upfront payment")). The Examiner determines that it
would have been obvious to apply the qualification techniques of Painter to
the opt-contract system of Harrington (see Ans. 5). Appellant's argument
does not address the Examiner's proposed combination. Accordingly, we
are not persuaded of reversible error by Appellant's argument. We further
note that Painter also provides the option of performing the same
qualification checks for the purpose of a refinance loan application, wherein
the loan applicant is already the homeowner (Painter, Fig. 15B ("purpose of
loan" can be "refinance")).
We note that Appellant uses the Reply Brief to introduce new
arguments with respect to claim 1. "Any bases for asserting error, whether
factual or legal, that are not raised in the principal brief are waived." Ex
parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative); see also
Optivus Tech., Inc. v. Ion Beam Appl 'ns. S.A., 469 F.3d 978, 989 (Fed. Cir.
2006) ("[A Jn issue not raised by an appellant in its opening brief ... is
waived.") (citing Becton Dickinson & Co. v. C.R. Bard, Inc., 922 F.2d 792,
800 (Fed. Cir. 1990)). The Examiner's findings with regards to claim 1 in
the Answer are identical to those in the Final Rejection, from which the
instant appeal was taken. In fact, the Examiner only addresses the
insufficiency in Appellant's argument presented in the Appeal Brief.
Appellant could have presented the newly introduced arguments in the
Appeal Brief. However, Appellant may not present arguments in a
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Application 12/101,653
piecemeal fashion, holding back evidence and arguments until an examiner
answers the original brief. In the Reply Brief, for instance, Appellant
presents additional arguments regarding different limitations in claim 1
(Reply Br. 5---6). This basis for asserting error is waived. See 37 C.F.R.
§ 41.37(c)(l)(iv).
Nevertheless, Appellant's argument that "Ashenmil does not teach or
suggest the financial qualification steps of a property owner, including
determining a value of the property and determining a loan to value ratio of
the property" as required by claim 1 (Reply Br. 5) is not persuasive because
we find that the Examiner relies on Painter, not Ashenmil, for disclosing this
limitation (see Ans. 5 (emphasis omitted)).
Appellant further argues that "Painter does not disclose the specific
qualification steps included in claim 1, including determining a value of the
property and determining a loan to value ratio of the property (Reply Br. 5
(emphasis omitted))" because "the ordinary artisan would conclude it was
appropriate to qualify the buyer of the property, and would never realize the
method of claim 1" (Id. at 5-6). Appellant contends that "[t]he Answer
provides no rationale for the leap from the teachings of Harrington,
Ashenmil and Painter ... where borrowers are qualified, to the method of
claim 1 where property owners are qualified" (id. at 6). According to
Appellant, "the Answer uses an improper hindsight based obviousness
analysis, relying on the invention as a blueprint to arrive at the conclusion
that claim 1 is obvious" (id.).
We are not persuaded of reversible error by Appellant's argument.
The Examiner finds that Harrington discloses a system wherein a
homeowner receives upfront payment in return for agreeing to use services
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Application 12/101,653
of a real estate broker (Ans. 3). The Examiner also finds that Harrington
discloses "determining a value of the property" (Final Act. 5), 3 but does not
disclose "determining a loan to value associated with the property" (id. at 4).
The Examiner determines that it would have been obvious to modify the
system of Harrington by applying the techniques of Painter, including
determining a loan to value ratio for the property (id. at 5). The Examiner
articulates a rationale for the proposed modification, rather than making a
leap. Specifically, the Examiner determines that it would have been obvious
to apply the techniques of Painter to the system of Harrington because it
"would have yielded predictable results and resulted in an improved system"
and "in order to eliminate the need for the realtor to research the prospective
client" (id.). Therefore, the Examiner's conclusion of obviousness takes into
account knowledge that was within the level of ordinary skill at the time the
claimed invention was made, and does not include knowledge gleaned only
from Appellant's disclosure. Thus, Appellant fails to specifically address
any insufficiency or error with the Examiner's articulated rationale for the
combination and persuasively rebut the Examiner's conclusion of
obviousness by showing that the claimed combination of familiar elements
produces any new function.
In view of the foregoing, we sustain the rejection of independent
claim 1, and independent claim 13, which recites substantially similar
subject matter and is not argued separately. We also sustain the rejection of
3 We note that the Examiner indicates otherwise (Final Act. 4). However,
this appears to be a typographical error because the Examiner finds this
limitation is taught by Harrington immediately thereafter (id. at 5), and thus,
we find this to be harmless error.
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Appeal2014-000350
Application 12/101,653
claims 2, 14, 16, and 20 because they are argued based on their dependency
on claims 1 and 13 (see App. Br. 12).
Rei ection 11
Clain1s 6, 8, and 9
Appellant relies on arguments presented with respect to clahn 1 and
indicates that Hagerty fails to remedy those shortcomings (App. Br. 12-13).
Thereforei we sustain the rejection of claims 6, 8 and 9 for the foregoing
reasons.
Rejection III
(-'l . ] '1 ~ azm _
Appellant relies on arguments presented with respect to claim 1 and
indicates that Schutzer fails to remedy those shortcomings (id. at 13).
Therefore, we sustain the rejection of claim 15 for the reasons discussed
above.
DECISION
The Examiner's decision to reject claims 1, 2, 6, 8, 9, 13-16, and 20 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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