Ex Parte SAAVEDRA-LIM

Board of Patent Appeals and Interferences

Dec 18, 2010

09475950 (B.P.A.I. Dec. 18, 2010)

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.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FRANK S. SAAVEDRA-LIM
____________

Appeal 2010-000659
Application 09/475,950
Technology Center 3600
____________

Before, MURRIEL E. CRAWFORD, HUBERT C. LORIN and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000659
Application 09/475,950

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STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-6, 9, 10, 12-15. We have jurisdiction under 35
U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE.

Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method of managing and assessing a set of risks relative to
a financial product, said method being accessed through a data
processing system, wherein said data processing system
comprises a series of nodes operatively connected with each
other, said method comprising the steps of:
(a) performing an application processing procedure on one or
more customers, comprising a check of the creditworthiness of
one or more selected customers; and issuing a financial product
to one or more of said customers if said selected customer is
determined to be creditworthy, thus resulting in an accepted
customer, and declining said application if said customer is
determined to be not creditworthy;
(b) assessing a credit authorization request from a system user,
wherein said request is initiated by a use of said financial
product;
(c) utilizing a predictive modeling routine to perform said
assessment;
(d) accepting or declining said credit authorization request as
based upon an outcome of said assessment;
(e) downloading an assessment result to said data processing
system for transfer to a database accessible by one or more
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remote nodes of said system;
(f) applying a fraud indicator to each assessment and wherein
said fraud indicator is selected from a list of fraud indicator and
wherein each of said fraud indicator on the list is representative
of a defined area of risk; and
(g) determining fraud loss ratios to benchmark risk
management effectiveness.

THE REJECTION

The Examiner relies upon the following as evidence of
unpatentability:
Basch US 6,119,103 Sep. 12, 2000

The following rejection is before us for review.
The Examiner rejected claims 1-6, 9-10 and 12-15 under 35 USC
§ 103(a) over Basch.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. The Specification describes that a system user determines fraud loss
ratios as a means for benchmarking risk management effectiveness.
(Specification 8:9-11).
2. The Specification on page, 27 lines 12-25, describes the ratios and
methodologies for each of the targeted ratios as follows:
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3. The Examiner found that “Basch does not explicitly disclose
benchmarking risk management effectiveness by determining fraud loss
ratios. However, benchmarking risk management effectiveness by
determining fraud loss ratios, is certainly well known to those of ordinary
skill in the art, and official notice to that effect is hereby taken.” (Answer 4)

ANALYSIS
We reverse the rejection of claims 1-6, 9-10 and 12-15.
The Examiner maintains that because the official notice was taken in
an Office Action dated 12/27/27, and the Appellant did not properly
challenge the notice seasonably thereafter, that the subject matter of the
official notice is now admitted prior art. (Answer 4).
However, our review of the record reveals that the rejection dated
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12/27/07 was based on a 35 U.S.C. § 103(a) rejection using a different
reference, namely, Keen, and not Basch. We find that to carry forward the
consequences of failing to traverse subject matter in one rejection which has
been withdrawn by the Examiner, into another rejection which uses an
entirely different reference would constitute error because each rejection
stands on its own.
This said, we find that the Specification defines ratios for each of the
targeted ratios (FF 2). The Specification and the claims tie these ratios to the
sole means for benchmarking (FF 1, 2), and thus the ratios constitute core
elements of the claim. We thus find that the Examiner improperly relied on
Official Notice (FF 3) for core factual findings. With respect to core factual
findings in a determination of patentability, however, the Examiner cannot
simply reach conclusions based on his/her own understanding or experience
-- or on an assessment of what would be basic knowledge. Rather, the
Examiner must point to some concrete evidence in the record in support of
these findings. In re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2001). Thus, we
cannot sustain the rejection of claim 1. Since claims 2-6, 9-10, and 12-15
depend from claim 1, and since we cannot sustain the rejection of claim 1,
the rejection of claims 2-6, 9-10 and 12-15 likewise cannot be sustained.

CONCLUSIONS OF LAW
We conclude the Examiner erred in rejecting claims 1-6, 9-10, and 12-
15 under 35 USC § 103(a) over Basch.
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DECISION
The decision of the Examiner to reject claims 1-6, 9-10, and 12-15 is
reversed.
REVERSED

MP

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