Ex Parte Rees

Board of Patent Appeals and Interferences

Mar 22, 2010

11275121 (B.P.A.I. Mar. 22, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte KENNETH E. REES 8
___________ 9
10
Appeal 2009-008223 11
Application 11/275,121 12
Technology Center 3600 13
___________ 14
15
Decided: March 22, 2010 16
___________ 17
18
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and 19
ANTON W. FETTING, Administrative Patent Judges. 20
FETTING, Administrative Patent Judge. 21
DECISION ON APPEAL 22
23
Appeal 2009-008223
Application 11/275,121
2
STATEMENT OF THE CASE 1
Kenneth E. Rees (Appellant) seeks review under 35 U.S.C. § 134 (2002) 2
of a final rejection of claims 1-18, the only claims pending in the application 3
on appeal. 4
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 5
(2002). 6
SUMMARY OF DECISION1 7
We REVERSE and ENTER A NEW GROUND OF REJECTION 8
PURSUANT TO 37 C.F.R §41.50(b). 9
THE INVENTION 10
The Appellant invented a method for the automated provisioning of 11
short-term loans using a telephone. Specification 1. 12
An understanding of the invention can be derived from a reading of 13
exemplary claim 1, which is reproduced below [bracketed matter and some 14
paragraphing added]. 15
1. A method for providing a loan using a telephone connection, 16
the method comprising: 17
[1] receiving a telephonic loan application from a customer; 18
[2] verifying information in the telephonic loan application; 19

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed December 28, 2007) and Reply Brief (“Reply Br.,” filed July 14,
2008), and the Examiner’s Answer (“Ans.,” mailed May 13, 2008), and
Final Rejection (“Final Rej.,” mailed April 4, 2007).
Appeal 2009-008223
Application 11/275,121
3
[3] based on results of the verification, determining whether 1
to provide the loan; 2
[4] instructing the customer to accept the terms and 3
conditions of the loan using a telephone in response to a 4
determination to provide the loan; and 5
[5] dispensing the loan only after telephonic acceptance of 6
the terms and conditions of the loan. 7
8
THE REJECTIONS 9
The Examiner relies upon the following prior art: 10
Levine et al US 6,233,566 B1 May 15, 2001
11
Claims 1-18 stand rejected under 35 U.S.C. § 102(b) as being anticipated 12
by Levine. 13
ISSUE 14
The issue of whether the Examiner erred in rejecting claims 1-18 under 15
35 U.S.C. § 102(b) as being anticipated by Levine turns on whether Levine 16
describes a borrower using a telephone to accept the terms and conditions of 17
a loan. 18
FACTS PERTINENT TO THE ISSUES 19
The following enumerated Findings of Fact (FF) are believed to be 20
supported by a preponderance of the evidence. 21
Facts Related to the Prior Art 22
Levine 23
Appeal 2009-008223
Application 11/275,121
4
01. Levine is directed to a centralized exchange system for creating 1
a marketplace to buy and sell financial products such as loans. 2
Levine 1:12-15. 3
02. Levine describes a typical loan life cycle time line. Levine 4
2:65-66. The second phase of the life cycle is the loan origination 5
phase. Levine 3:7-8. A potential borrower contacts a lender 6
telephonically using a public service telephone network. Levine 7
3:8-14, 11:26-30, and 18:35-51. A loan agent collects information 8
from the consumer. Levine 3:14-16. The loan agent also works 9
with the potential borrower to agree on a loan amount, interests, 10
points, duration, or term of the loan and other features of the loan. 11
Levine 3:16-19. The loan agent makes a determination based on 12
the collected information and credit information as to whether to 13
pre-approve the borrower of the loan. Levine 20:49-51. If the 14
loan is not approved, the borrower is notified of the declined loan 15
application. Levine 20:61-64. The loan agent sends the agreed 16
upon information of a pre-approved loan to a loan processor and 17
loan underwriter for processing and validation. Levine 3:19-23. 18
Upon validation, the terms of the loan are accepted by the lender 19
and borrower then the loan is approved. Levine 3:23-28. The 20
loan agent then works with a loan closer to finalize the loan, issue 21
a check, and forward the check to the borrower. Levine 3:23-28. 22
03. Levine further describes an exchange system where a person 23
wishing to sell a loan or loan pool can access the system and 24
publish a loan or a loan pool for sale. Levine 21:24-26 and 21:34-25
36. The exchange system will then test the published loan 26
Appeal 2009-008223
Application 11/275,121
5
information against buyers’ pre-set rules to determine if there is a 1
match. Levine 21:58-60. If a match is determined, the exchange 2
system will notify the buyers of the published loan. Levine 21:60-3
65. The notification can be sent via email or a telephone call. 4
Levine 21:65-67. 5
04. Levine further describes that in an alternative embodiment, 6
subscribers can access the exchange system by a direct telephone 7
dial-up connection. Levine 12:33-37. 8
PRINCIPLES OF LAW 9
Anticipation 10
"A claim is anticipated only if each and every element as set forth in the 11
claim is found, either expressly or inherently described, in a single prior art 12
reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 13
631 (Fed. Cir. 1987). "When a claim covers several structures or 14
compositions, either generically or as alternatives, the claim is deemed 15
anticipated if any of the structures or compositions within the scope of the 16
claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351 (Fed. 17
Cir. 2001). "The identical invention must be shown in as complete detail as 18
is contained in the ... claim." Richardson v. Suzuki Motor Co., 868 F.2d 19
1226, 1236 (Fed. Cir. 1989). The elements must be arranged as required by 20
the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology 21
is not required. In re Bond, 910 F.2d 831, 832 (Fed. Cir. 1990). 22
Obviousness 23
A claimed invention is unpatentable if the differences between it and 24
the prior art are “such that the subject matter as a whole would have been 25
Appeal 2009-008223
Application 11/275,121
6
obvious at the time the invention was made to a person having ordinary skill 1
in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham 2
v. John Deere Co., 383 U.S. 1, 13-14 (1966). 3
In Graham, the Court held that that the obviousness analysis is 4
bottomed on several basic factual inquiries: “[(1)] the scope and content of 5
the prior art are to be determined; [(2)] differences between the prior art and 6
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 7
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 8
U.S. at 406. “The combination of familiar elements according to known 9
methods is likely to be obvious when it does no more than yield predictable 10
results.” KSR, 550 U.S. at 416. 11
ANALYSIS 12
Claims 1-18 rejected under 35 U.S.C. § 102(b) as being anticipated by 13
Levine 14
The Examiner found that Levine anticipates claims 1-18. The Appellant 15
contends that Levine fails to describe limitations [4] and [5] of claim 1. 16
App. Br. 3-5 and Reply Br. 1-2. The Appellant specifically contends that 17
Levine fails to describe that a borrower accepts the terms and conditions of a 18
loan using a telephone. Reply Br. 2. The Appellant even further contends 19
that a borrower does not make the acceptance using a telephone after a 20
determination to provide the loan. Reply Br. 2. 21
We agree with the Appellant. Limitation [4] requires that in response to 22
a determination to provide a loan, instructing the customer to accept the 23
terms and conditions of the loan using a telephone. Limitation [5] further 24
requires dispensing the loan after telephonic acceptance of the terms and 25
Appeal 2009-008223
Application 11/275,121
7
conditions. Levine generally describes an exchange system for the buying 1
and selling of loans and also describes a loan origination subsystem. FF 01-2
02. Levine describes the typical loan life cycle time line. FF 02. The 3
second phase of a loan is a loan origination phase. FF 02. Levine describes 4
that borrowers can call a lender and the lender will collect information from 5
the borrower telephonically. FF 02. A loan agent then makes a 6
determination of whether to pre-approve the borrower and the borrower is 7
notified of the pre-approval. FF 02. If the borrower is pre-approved, the 8
loan information is submitted to a loan processor and a loan underwriter for 9
validation and finalization. FF 02. Once validated and finalized, the 10
borrower receives an issued check for the loan amount. FF 02. 11
Although Levine describes that borrowers may use a telephone to call 12
the lender, Levine is silent as to how any communications between the 13
lender and borrower are performed subsequent to the initial information 14
gathering step. Levine describes that borrowers agree to the terms and 15
conditions with the lender after a determination to provide a loan (FF 02), 16
but it is not explicitly described that this agreement is communicated 17
telephonically. The Examiner responds that Levine describes that 18
subscribers can alternatively connect to the exchange server using a 19
telephone dial-up connection (Ans. 5). 20
Levine, however, describes that subscribers to the exchange system can 21
connect to the exchange system telephonically (FF 03-04). The exchange 22
system is separate from the loan origination subsystem and the subscribers 23
of the loan exchange system are separate from the borrowers of the loan 24
origination subsystem. FF 02-04. As such, this passage of Levine fails to 25
describe borrowers can accept the terms and conditions of a loan using a 26
Appeal 2009-008223
Application 11/275,121
8
telephone. Since limitations [4] and [5] explicitly require that the 1
acceptance is done using a telephone, Levine does not anticipate claim 1. 2
Claims 2-18 incorporate this limitation from claim 1 and therefore Levine 3
fails to anticipate these claims as well. 4
NEW GROUND OF REJECTION 5
The following new ground of rejection is entered pursuant to 37 C.F.R. § 6
41.50(b). Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over 7
Levine. 8
As discussed supra, Levine describes all of the limitations of claim 1 9
except for the feature to accept the terms and conditions of a loan using a 10
telephone after a determination to provide the loan has been made. Levine 11
describes a public service telephone network connected to the loan 12
origination subsystem that borrowers can use to contact the lender. FF 02. 13
Levine further describes that borrowers accept the terms to a loan after a 14
loan is pre-approved and again after a loan has been processed and finalized. 15
FF 02. 16
It is generally obvious to automate a known manual procedure or 17
mechanical device. Our reviewing court stated in Leapfrog Enterprises Inc. 18
v. Fisher-Price Inc., 485 F.3d 1157, 1163 (Fed. Cir. 2007) that one of 19
ordinary skill in the art would have found it obvious to combine an old 20
electromechanical device with electronic circuitry “to update it using 21
modern electronic components in order to gain the commonly understood 22
benefits of such adaptation, such as decreased size, increased reliability, 23
simplified operation, and reduced cost. . . . The combination is thus the 24
Appeal 2009-008223
Application 11/275,121
9
adaptation of an old idea or invention . . . using newer technology that is 1
commonly available and understood in the art.” Leapfrog, 485 F.3d at 1163. 2
Furthermore, Levine also describes an exchange system that notifies 3
subscribers of loan information using a telephone. FF 03. A person with 4
ordinary skill in the art would have recognized the benefit of increasing the 5
flexibility in methods of communication, thereby facilitating and expediting 6
the loan creation process by communicating with a borrower using a 7
telephone throughout the loan creation process. As such, Levine suggests 8
that a borrower can communicate loan acceptance using a telephone and a 9
person of ordinary skill in the art would have found it obvious to combine 10
the feature of using a telephone to communicate loan information, as 11
described in connection with the exchange system, to the loan origination 12
subsystem to allow a borrower to communicate acceptance of terms and 13
conditions of an approved loan using a telephone. 14
CONCLUSIONS OF LAW 15
The Examiner erred in rejecting claims 1-18 under 35 U.S.C. § 102(b) as 16
being anticipated by Levine. 17
A new ground of rejection is entered 37 C.F.R. § 41.50(b) in which 18
claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable over Levine. 19
DECISION 20
To summarize, our decision is as follows. 21
• The rejection of claims 1-18 under 35 U.S.C. § 102(b) as being 22
anticipated by Levine is not sustained. 23
• A new ground of rejection is entered pursuant to 37 C.F.R. § 41.50(b). 24
Appeal 2009-008223
Application 11/275,121
10
o Claim 1 is rejected under 35 U.S.C. § 103(a) as unpatentable 1
over Levine. 2
This decision contains new grounds of rejection pursuant to 37 CFR § 3
41.50(b). 37 CFR § 41.50(b) provides “[a] new ground of rejection pursuant 4
to this paragraph shall not be considered final for judicial review.” 5
37 CFR § 41.50 (b) also provides that the appellant, WITHIN TWO 6
MONTHS FROM THE DATE OF THE DECISION, must exercise one of 7
the following two options with respect to the new ground of rejection to 8
avoid termination of the appeal as to the rejected claims: 9
(1) Reopen prosecution. Submit an appropriate amendment 10
of the claims so rejected or new evidence relating to the claims 11
so rejected, or both, and have the matter reconsidered by the 12
examiner, in which event the proceeding will be remanded to 13
the examiner …. 14
(2) Request rehearing. Request that the proceeding be 15
reheard under § 41.52 by the Board upon the same record …. 16
17
No time period for taking any subsequent action in connection with this 18
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 19
20
REVERSED 21
41.50(b) 22
23
24
25
mev 26
Address 27
Appeal 2009-008223
Application 11/275,121
11
FISH & RICHARDSON P.C. 1
P.O. BOX 1022 2
MINNEAPOLIS MN 55440-1022 3