11039387 (B.P.A.I. Aug. 27, 2010)

Ex Parte Pembroke

Board of Patent Appeals and InterferencesAug 27, 2010

11039387 (B.P.A.I. Aug. 27, 2010)

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. 11/039,387 01/18/2005 John J. Pembroke 040261-000900US 1083 7590 08/30/2010 John J. Pembroke 3883 Mountainside Trail Evergreen, CO 80439 EXAMINER VYAS, ABHISHEK ART UNIT PAPER NUMBER 3691 MAIL DATE DELIVERY MODE 08/30/2010 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 JOHN J. PEMBROKE ____________ Appeal 2010-000481 Application 11/039,387 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and BIBHU R. MOHANTY, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-000481 Application 11/039,387 STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. § 134 (2002) of the final rejection of claims 1-23 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 providing a loan to a borrower in which a total loan value for real property and medical and/or healthcare services is calculated (Spec. [0007]). Claim 1, reproduced below with some numerals in bracketing added, is representative of the subject matter of appeal. 1. A method for providing a loan to a borrower, the method comprising: receiving, at a host system, an identification of real property and a specification of medical and/or healthcare services; [1] calculating, with the host system, a total loan value for the real property and specified medical and/or healthcare services; [2] requesting, with the host system, approval of the loan secured by the real property for the total loan value; and [3] initiating, with the host system, a closing on the loan at which a customer depository account is funded to provide future funds for payment of expenses for the medical and/or healthcare services. THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: 2 Appeal 2010-000481 Application 11/039,387 Kunzle US 2002/0023051 A1 Feb. 21, 2002 Herzfeld US 2002/0103750 A1 Aug. 1, 2002 Bagbey US 2005/0010423 A1 Jan. 13, 2005 Raines WO 02/23439 Mar. 21, 2002 The following rejections are before us for review: 1. Claims 1-3, 5, 7-9, 14, 20-22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kunzle and Bagbey. 2. Claims 4, 6, and 13-19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kunzle, Bagbey, and WIPO. 3. Claims 10-12 and 23 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kunzle, Bagbey, and Herzfeld. THE ISSUES At issue is whether the Appellant has shown that the Examiner erred in making the aforementioned rejections. For claim 1 and its dependent claims, this issue turns on whether it would have been obvious to combine the teachings of Kunzle and Bageby to meet claim limitation [1] identified above. The rejection of claim 21 and its dependent claims turns on a similar issue. FINDINGS OF FACT We find the following enumerated findings of fact (FF) are supported at least by a preponderance of the evidence:2 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). 3 Appeal 2010-000481 Application 11/039,387 FF1. Kunzle has disclosed a system where a customer can apply for a plurality of loans simultaneously (Abstract). Kunzle has disclosed that loan products may include mortgages, home equity, and lines of credit [0015]. FF2. Bagbey has disclosed a system for real estate and ancillary services provided through a single point of sale (Title). FF3. Bageby has disclosed that a refinance package including a mortgage/equity secured line of credit allows for purchase power up to an allowable credit rate to buy auxiliary services. The services may include a tax preparer service and health insurance [0026]. FF4. Bageby has not shown that the mortgage/equity secured line of credit exceeds the value for the real estate on which the mortgage is based at [0026] and [0030]. ANALYSIS The Appellant argues that the rejection of claim 1 is improper because claim limitation [1] identified above is not taught or suggested by Kunzle and Bageby (Br. 4). The Appellant argues that “[a]t no point does Kunzle teach or suggest a loan value for real property and medical services” (Br. 4). The Appellant also argues that Bageby simply allows for a conventional mortgage equity line of credit (Reply Br. 4). In contrast the Examiner has determined that the claim 1 is properly rejected (Ans. 11-12). We agree with the Appellant. Claim 1 requires in part: receiving, at a host system, an identification of real property and a specification of medical and/or healthcare services; [1] calculating, with the host system, a total loan value for the real 4 Appeal 2010-000481 Application 11/039,387 property and specified medical and/or healthcare services (claim 1, emphasis added). Beginning with claim construction we construe claim limitiation [1] to require calculating a total loan value (an amount) based on the combination of the real property and the medical and/or health care services in some manner. The Appellant’s Specification provides support for such a claim construction at [0026] and in Fig. 2A (item 212) in which a “bundling lender” and “bundled loan” is described. Kunzle has disclosed a system where a customer can apply for a plurality of loans simultaneously, including a mortgage (FF1), but the Examiner has acknowledged that Kunzle fails to teach a total loan value of specified medical and/or health services (Ans. 3). The Examiner states that Bageby teaches a “mortgage/equity secured line of credit” and structuring a property based loan which can be used to pay for a healthcare service (Ans. 12, ppgh. 28). Here, the Examiner has not asserted that Kunzle teaches a total loan value that includes both real property and medical service expenses. The Examiner has not asserted that Kunzle teaches a total loan value to exceed that of the mortgage. Bageby does teach a mortgage/equity secured line of credit that allows for purchase power to buy auxiliary services such as health insurance (FF3). However, Bageby has not shown that the mortgage/equity secured line of credit exceeds the value for the real estate on which the mortgage is based (FF4). Thus a combination of Kunzle and Bageby would fail to include “a total loan value for the real property and specified medical and/or healthcare services” as claimed since in Bageby does not show the secured line of credit exceeds the value for the real estate on which the 5 Appeal 2010-000481 Application 11/039,387 mortgage is based. Here the rejection as presented fails to provide articulated reasoning with some rational underpinning to support the legal conclusion of obviousness in the stated combination of Kunzle and Bageby. For these reasons the rejection of claim 1 and its dependent claims is not sustained. Claim 21 contains a similar limitation to that addressed above and the rejection of claim 21 and its dependent claims is not sustained for these same reasons. CONCLUSIONS OF LAW We conclude that Appellant has shown that the Examiner erred in rejecting claims 1-3, 5, 7-9, 14, 20-22 under 35 U.S.C. § 103(a) as unpatentable over Kunzle and Bagbey. We conclude that Appellant has shown that the Examiner erred in rejecting claims 4, 6, and 13-19 under 35 U.S.C. § 103(a) as unpatentable over Kunzle, Bagbey, and WIPO. We conclude that Appellant has shown that the Examiner erred in rejecting claims 10-12 and 23 under 35 U.S.C. § 103(a) as unpatentable over Kunzle, Bagbey, and Herzfeld. DECISION Examiner’s rejection of claims 1-23 is reversed. REVERSED JRG John J. Pembroke 3883 Mountainside Trail Evergreen, CO 80439 6