Ex Parte Ghosh et al

Board of Patent Appeals and Interferences

Sep 13, 2011

11842368 (B.P.A.I. Sep. 13, 2011)

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.
11/842,368 08/21/2007 Debashis Ghosh 007131.00087 3260
71733 7590 09/14/2011
BANNER & WITCOFF, LTD
ATTORNEYS FOR CLIENT NUMBER 007131
10 SOUTH WACKER DR.
SUITE 3000
CHICAGO, IL 60606
EXAMINER
GREGG, MARY M
ART UNIT PAPER NUMBER
3694
MAIL DATE DELIVERY MODE
09/14/2011 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 DEBASHIS GHOSH, SUDESHNA BANERJEE,
KURT NEWMAN, THAYER ALLISON, and TIMOTHY BENDEL
___________

Appeal 2010-012073
Application 11/842,368
Technology Center 3600
____________

Before BIBHU R. MOHANTY, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Debashis Ghosh, et al. (Appellants) seek our review under 35 U.S.C. §
134 (2002) of the final rejection of claims 1, 3, 4, 9-12, 14, 15, 21, and 22.
We have jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.1

THE INVENTION
This invention is a “customer-oriented loan or credit product that
allows separate multiple assets to be used as collateral in a single lending
product.” Spec., para. [02].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method for lending money, the method
comprising:
a processor determining a maximum loan amount
based on equity of a browser in a plurality of
tangible assets;
the processor determining an amount of money so
as to be less than or equal to the maximum lending
amount;
lending the determined amount of money to the
borrower; and

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Feb. 12, 2010) and Reply Brief (“Reply Br.,” filed Jun. 28, 2010),
and the Examiner’s Answer (“Ans.,” mailed Apr. 28, 2010).

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after lending, adjusting the maximum loan amount
based on equity of the borrower in another tangible
asset in addition to the plurality of assets.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Manelis US 2007/0027799 A1 Feb. 1, 2007
Bear Sterns ARM Trust, Mortgage Pass-Through Certificates,
Newswire (May 31, 2007). (Hereinafter, News.)

Appellants’ admitted prior art that “it is well known in the industry for
multiple houses to be on separate lots.” Ans. 8. (Hereinafter, AAPA.)

The following rejections are before us for review:
1. Claims 1, 3, 4, 9, 10, 21, and 22 are rejected under 35 U.S.C. §
102(e) as being anticipated by Manelis.
2. Claims 11, 12, and 15 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Manelis and News.
3. Claim 14 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Manelis, News, and AAPA.

ISSUES
The first issue is whether Examiner erred in finding claims 1, 3, 4, 9,
10, 21, and 22 are anticipated by Manelis. Specifically, the issue is whether
Manelis expressly or inherently describes the steps of: 1) a processor
determining a maximum loan amount based on equity of a borrower in a
plurality of tangible assets and 2) after lending, adjusting the maximum loan
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amount based on equity of the borrower in another tangible asset in addition
to the plurality of assets.
The second issue is whether the Examiner erred in finding claims 11,
12, and 15 unpatentable under 35 U.S.C. § 103(a) over Manelis and News.
Specifically, the issue is whether the combination of Manelis and News
teaches a processor determining an average loan-to-value quantity based on
the plurality of loan-to-value quantities. The rejection of claim 14 under 35
U.S.C. § 103(a) as being unpatentable over Manelis, News, and AAPA also
turns on this issue.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. We adopt the Examiner’s findings of fact related to the Manelis
and News references on pages 8-14 of the Answer.
2. In addition we find that, Manelis states: “For instance, collateral
module 38 may switch collateral for the funds from one property to
another, so that funds previously secured by one property (or group
of properties) are secured by a second property (or group of
properties).” Para. [0034].
3. Manelis describes that the collateral for an account that may
comprise a ULOC can be switched from a single Property A to a
combination of Property A and Property B. Para. [0035].
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4. Manelis states: “It should be appreciated that such dynamic
collateralization may enable the customer to use one or more
properties to finance the purchase of one or more different
properties.” Para. [0035].
5. Manelis’s paragraph [0036] states:
It should be noted that the value in the
account (and/or the value of the ULOC or
other account feature) may increase or
decrease based on the amount of collateral
(e.g., the total amount of funds secured by
assets associated with the account such as
the value of Property A plus the value of
Property B when both are secured in the
account).
6. Manelis describes an other-credit module which may switch
collateral from one asset to another; for example, a loan secured by
a home can be secured by a condo and boat instead. Para. [0043].
7. Manelis describes that the determined value of a property can be
used as collateral for a credit line and that the credit line may
increase as the value of a property used as collateral increases.
Para. [0055].

ANALYSIS
The rejection of claims 1, 3, 4, 9, 10, 21, and 22 under § 102(e) as being
anticipated by Manelis
The Appellants argue claims 1, 3, 4, 9, 10, 21, and 22 as a group.
App. Br. 10-11. We select claim 1 as the representative claim for this group,
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and the remaining claims 3, 4, 9, 10, 21, and 22 stand or fall with claim 1.
37 C.F.R. § 41.37(c)(1)(vii).
The Examiner and the Appellants dispute whether Manelis anticipates
the steps of claim 1; specifically, the steps of 1) “[the] processor determining
a maximum loan amount based on equity of a borrower in a plurality of
tangible assets”; and 2) “after lending, adjusting the maximum loan amount
based on equity of the borrower in another tangible asset in addition to the
plurality of assets.” App. Br. 8-11, Reply Br. 2-4, and Ans. 8-12.
Turning to the first step at issue, the Appellants and the Examiner
dispute whether Manelis discloses that the maximum amount is determined
based on a plurality of tangible assets. Id. We note the Appellants admit
“that Manelis discloses determining the credit limit for an account where the
account is secured by only a single asset” (App. Br. 9) (for example, see
Example 2 in Manelis’ paragraphs [0053]-[0059]) and, therefore, the dispute
turns on whether Manelis also describes whether a plurality of assets can
alternatively be used to secure the credit limit.
We agree with the Examiner that Manelis, as a whole, describes a
processor determining a maximum loan amount based on equity of a
borrower in a plurality of tangible assets. See Ans. 8-12. In addition to the
portions cited by the Examiner (see Ans. 9-11), we note that paragraph
[0034] states that funds are secured by “one property (or group of
properties)” (FF 2); that Manelis describes that the value of an account is,
for example, “the total amount of funds secured by assets associated with the
account, such as the value of Property A plus the value of Property B” (FF
5); that Manelis describes that a customer is enabled to use one or more
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properties to finance the purchase of one or more different properties (FF 4);
and that paragraph [0043] describes securing a loan with a condo, as well as
a, boat (FF 6). Therefore, we find the Appellants’ argument unpersuasive.
Further, in as much as the Appellants may be arguing that Manelis
does not describe a single embodiment or example that expressly describes
securing the line of credit with a plurality of assets, we find that argument
also unpersuasive. “Apotex is of course correct that anticipation requires
that all limitations of the claimed invention are described in a single
reference, rather than a single example in the reference.” Glaxo Group Ltd.
v. Apotex, Inc., 376 F.3d 1339, 1348 (Fed. Cir. 2004).
Turning to the second step at issue, we also agree with the Examiner
that Manelis describes after lending, adjusting the maximum loan amount
based on equity of the borrower in another tangible asset in addition to the
plurality of assets. See Ans. 9-11. As the Examiner found (see Ans. 11)
Manelis’ paragraph [0035] describes that the collateral for a ULOC can be
switched from a Property A to a combination of a percentage of Property A
plus a percentage of Property B. FF 3. Manelis also describes that a credit
limit can be increased based on a reappraisal of the property or collateral
used to secure the account. FF 5 and 7. Keeping in mind that we found
above that a property could alternatively be a group of properties, we find
that Manelis describes this step.
Therefore, we are not persuaded by the Appellants that the Examiner
erred in rejecting claims 1, 3, 4, 9, 10, 21, and 22 as anticipated by Manelis.
We note that independent claim 22 recites similar limitations and that the
Appellants traverse the rejection of claim 22 for the same reasons used to
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traverse the rejection of claim 1 (App. Br. 11). Accordingly, the rejection of
claims 1 and 22, and claims 3, 4, 9, 10, and 21, dependent thereon, under 35
U.S.C. § 102(e) as being anticipated by Manelis is affirmed.

The rejection of claims 11, 12, and 15 under § 103(a) as being unpatentable
over Manelis and News
The Appellants argued claims 11, 12, and 15 as a group. App. Br. 12-
13. We select claim 11 as the representative claim for this group, and the
remaining claims 12 and 15 stand or fall with claim 11. 37 C.F.R. §
41.37(c)(1)(vii).
The Appellants argue that the combination of Manelis and News does
not result in the claimed step of a processor determining an average loan-to-
value quantity based on the plurality of loan-to-value quantities, because: 1)
claim 11’s previously recited step requires that all of the consolidated loans
are secured by the same borrower and 2) in News the pooled mortgage
loans, for which the average loan-to-value quantity is determined, are not
secured by the same borrower. App. Br. 12-13 and Reply Br. 4-6.
In as much as the Appellants may be arguing that bodily incorporating
News into Manelis does not teach the step at issue (see App. Br. 12-13 and
Reply Br. 4-6),
[t]he test for obviousness is not whether the
features of a secondary reference may be bodily
incorporated into the structure of the primary
reference; nor is it that the claimed invention must
be expressly suggested in any one or all of the
references. Rather, the test is what the combined
teachings of the references would have suggested
to those of ordinary skill in the art.
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In re Keller, 642 F.2d 413, 425 (CCPA 1981). In the rejection, the
Examiner found that Manelis taught the step of consolidating a plurality of
lending products into a single combined lending product providing a loan to
a borrower, and that News taught determining an average loan-to-value
quantity. See Ans. 6-7. We find the Appellants’ argument, which is directed
to News, unpersuasive as to whether the combined teachings of Manelis and
News would have resulted in the step at issue.
Accordingly, we are not persuaded by the Appellants that the
Examiner erred in rejecting claim 11, 12, and 15, and we affirm the rejection
of claims 11, 12, and 15 under 35 U.S.C. § 103(a) as being unpatentable
over Manelis and News.

The rejection of claim 14 under § 103(a) as being unpatentable over
Manelis, News, and AAPA
The Appellants argue against the rejection of claim 14 for the same
reason used to argue against the rejection of claim 11. App. Br. 14.
Accordingly, because we found them unpersuasive as to that rejection, we
find them equally unpersuasive as to error in the rejection of claim 14. The
rejection of claim 14 under 35 U.S.C. § 103(a) as being unpatentable over
Manelis, News, and AAPA is affirmed.

DECISION
The decision of the Examiner to reject claims 1, 3, 4, 9-12, 14, 15, 21,
and 22 is affirmed.
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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)(1)(iv).

AFFIRMED

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