Ex Parte Merlo et al

Board of Patent Appeals and Interferences

Dec 19, 2011

10849702 (B.P.A.I. Dec. 19, 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.
10/849,702 05/20/2004 Anthony Merlo 49416-5800 7627
66939 7590 12/19/2011
SNELL & WILMER L.L.P. (1st AMERICAN RE)
600 ANTON BOULEVARD
SUITE 1400
COSTA MESA, CA 92626
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
12/19/2011 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 ANTHONY MERLO,
CHRIS LEAVELL,
CHRISTY WILSON,
WILLIAM VAN ROOYEN,
KARIEM ORTIZ-VINCENTY, and
GREG SCHNEIDER
___________

Appeal 2010-011974
Application 10/849,702
Technology Center 3600
____________

Before ANTON W. FETTING, BIBHU R. MOHANTY, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011974
Application 10/849,702

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STATEMENT OF THE CASE
Anthony Merlo et al., (Appellants) seek our review under 35 U.S.C. §
134 (2002) of the final rejection of claims 15-28. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE. 1

THE INVENTION
This invention is a system for “evaluating risk associated with
financing the purchase of, or investing in, real property.” Spec. 1:5-6.
Claim 15, reproduced below, is illustrative of the subject matter on
appeal.
15. A system for evaluating risk associated with a
subject property, the subject property comprising
real property and the system comprising:
an input component;
a memory component;
an output component; and
a processing component communicatively
connected to the input component, the memory
component, and the output component, the
processing component programmed to perform
actions comprising:

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed Feb. 9, 2010) and Reply Brief (“Reply Br.,” filed Jul. 12, 2010),
and the Examiner’s Answer (“Ans.,” mailed May 11, 2010).

Appeal 2010-011974
Application 10/849,702

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receiving, via the input component, first
information comprising a first estimated value of
the subject property;
storing the first information in the memory
component;
receiving, via the input component, second
information comprising a second estimated value
of the subject property;
storing the second information in the
memory component;
calculating an automated valuation model
(“AVM”) variance, a median variance, and an
appreciation value;
calculating a risk value based upon the first
information and the second information, the AVM
variance, the median variance and the appreciation
value, the risk value indicating the risk associated
with the subject property; and
outputting, via the output component, the
risk value.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Schulkins US 2004/0243509 A1 Dec. 2, 2004

The following rejection is before us for review:
1. Claims 15-28 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Schulkins.
Appeal 2010-011974
Application 10/849,702

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ISSUE
The issue is whether Schulkins describes a processing component that
is programmed to “calculat[e] a risk value based upon the first information
and the second information, the AVM variance, the median variance and the
appreciation value, the risk value indicating the risk associated with the
subject property” as recited in claim 15.

ANALYSIS
The Appellants argue that none of the cited portions of Schulkins
describes a processor that is programed to: “calculat[e] a risk value based
upon the first information and the second information, the AVM variance,
the median variance and the appreciation value, the risk value indicating the
risk associated with the subject property” (emphasis added) as recited in
claim 15. The Examiner cites “paragraphs [0023], [0016,] table for
valuation products, [0078-0081], [0086] 104 in fig 3A, pages 3-5” as
describing the entire claim 15, but does not particularly point to where the
limitation at issue is described in Schulkins. Ans. 4. We note that in
response to the Appellants’ argument, the Examiner also does not point to
where this limitation is described in Schulkins. See Ans. 7-8. We agree
with the Appellants (App. Br. 9-13 and Reply Br. 5-8 ) that while Schulkins
describes confidence scores (for example, see paras., [0074] and [0081]),
Schulkins fails to describe a processor that is programmed to calculate the
confidence scores based on the information, variances, and values recited in
claim 15.
The Examiner has failed to establish a prima facie showing of
anticipation. Accordingly, the rejection of claim 15, and claims 16-28,
Appeal 2010-011974
Application 10/849,702

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dependent thereon, under 35 U.S.C. § 102(e) as being anticipated by
Schulkins is reversed.

DECISION
The decision of the Examiner to reject claims 15-28 is reversed.

REVERSED

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