Ex Parte Martignoni

Board of Patent Appeals and Interferences

Nov 28, 2011

11789331 (B.P.A.I. Nov. 28, 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.
11/789,331 04/24/2007 Thomas M. Martignoni Martignoni III 7783
82343 7590 11/29/2011
Scott P. Zimmerman, PLLC - Others
P.O. Box 3822
Cary, NC 27519
EXAMINER
FIELDS, BENJAMIN S
ART UNIT PAPER NUMBER
3684
MAIL DATE DELIVERY MODE
11/29/2011 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 M. MARTIGNONI
____________

Appeal 2010-009934
Application 11/789,331
Technology Center 3600
____________

Before: MURRIEL E. CRAWFORD, MEREDITH C. PETRAVICK, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-009934
Application 11/789,331

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STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-21. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6 (2002). An oral
hearing was held on November 15, 2011.
The claimed invention is directed to lines of credit in reverse
mortgages (Spec., para. [0003]). Claim 1, reproduced below, is further
illustrative of the claimed subject matter.
1. A method for adjusting a loan, comprising:
retrieving a value of collateral from memory;
creating prior to or at closing at least one of i) a line of
credit, ii) a schedule of future payments, and iii) a lump sum to
be paid to a borrower by a computer processor communicating
with the memory; and
after closing of the loan:
at least one of establishing the line of credit and adjusting
the line of credit; and
establishing the schedule of future payments from a
lender to the borrower during a term of the loan and adjusting
the schedule of future payments based on the value of the
collateral and a balance of the loan.

Claims 1, 12, 20, and 21 stand rejected under 35 U.S.C. § 101 for
failing to recite statutory subject matter1; claims 1-21 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Jannah (US Pub. No. 2002/0055905
A1, pub. May 9, 2002).
We AFFIRM-IN-PART and enter a NEW GROUND of rejection
pursuant to our authority under 37 C.F.R. § 41.50(b).

1 Appellant incorrectly lists only claims 1, 12, and 20 as rejected under 35
U.S.C. § 101 (App. Br. 7). The Examiner lists claims 1, 12, 20, and 21 as
rejected under 35 U.S.C. § 101 (Exam’r’s Ans. 3-4; pp. 2-4 of Final Rej.
mailed Jul. 14, 2009).
Appeal 2010-009934
Application 11/789,331

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ANALYSIS
We are not persuaded the Examiner erred in asserting that
independent claim 12 recites unpatentable subject matter under 35 U.S.C. §
101 (App. Br. 7). Appellant asserts that the recitation of “memory” and
“computer processor” in independent claim 1 is sufficient to meet the
“machine” prong of the “machine-or-transformation” test. Notwithstanding
that this test for determining patent eligibility of a process is unduly narrow
under Bilski v. Kappos, 130 S. Ct. 3218 (2010), it can nevertheless be
instructive as a factor in determining whether the claimed processes are
patent-ineligible abstract ideas. We note that this is the only factor at issue
(App. Br. 7). To that end, we agree with and adopt the Examiner’s rationale,
as set forth on pages 8-10 of the Examiner’s Answer.

NEW GROUND OF REJECTION
Using our authority under 37 C.F.R. § 41.50(b), we newly reject
claims 1-21 under 35 U.S.C. § 112, second paragraph, for indefiniteness.
Independent claim 1 recites the steps of creating, establishing, and adjusting
a line of credit and a schedule of future payments. However, we are unable
to delineate the differences between creating, establishing, and adjusting.
For example, we are unclear as to the difference between “creating” and
“establishing.” Independent claim 1 recites that the schedule of future
payments is “created” prior to or at closing, but then that same schedule (as
evidenced by the use of the word “the” before “schedule” in lines 8-9 of
independent claim 1) is “established” after closing. However, if a schedule

2 In setting forth our analysis, we choose independent claim 1 as
representative, pursuant to our authority under 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2010-009934
Application 11/789,331

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is already “created,” we are unclear how it can also be “established” at a
later point in time. Indeed, the only two references to “establish” in the
Specification are prior to closing, and the only reference to “create” is in
reference to “Loan Balance +LOC” (paras. [0015], [0022]; originally-filed
claim 1).
Perhaps Appellant meant for “establishing” to be a synonym for “re-
establishing.” However, under that construction, we are unclear as to the
differences between “establishing” and “adjusting,” as both appear to denote
making changes to the schedule. Independent claims 12, 20, and 21, and all
dependent claims, have the same ambiguities with respect to the steps of
creating, establishing, and adjusting, and thus are also rejected under 35
U.S.C. § 112, second paragraph, for indefiniteness.
We do not reach the merits of the rejections under 35 U.S.C. § 102(b)
at this time. Before a proper review of the rejections under 35 U.S.C. §
102(b) can be performed, the subject matter encompassed by the claims on
appeal must be reasonably understood without resort to speculation. Since
the claims fail to satisfy the requirements under 35 U.S.C. § 112, second
paragraph, for definiteness, we are constrained to reverse, pro forma, the
Examiner’s rejections under 35 U.S.C. § 102(b). See In re Steele, 305 F.2d
859, 862-63 (CCPA 1962) (A prior art rejection cannot be sustained if the
hypothetical person of ordinary skill in the art would have to make
speculative assumptions concerning the meaning of claim language.); see
also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (“If no reasonably
definite meaning can be ascribed to certain terms in the claim, the subject
matter does not become obvious- the claim becomes indefinite.”)

Appeal 2010-009934
Application 11/789,331

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DECISION
The rejection of claims 1, 12, 20, and 21 under 35 U.S.C. § 101 is
AFFIRMED.
The rejection of claims 1-21 under 35 U.S.C. § 102(b) is REVERSED
pro forma.
We enter a NEW GROUND of rejection, and reject claims 1-21 under
35 U.S.C. § 112, second paragraph, for indefiniteness.

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 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 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)
Appeal 2010-009934
Application 11/789,331

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