John Plantada et al.

Patent Trials and Appeals Board

Sep 5, 2019

13974253 - (D) (P.T.A.B. Sep. 5, 2019)

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.
13/974,253 08/23/2013 John Plantada US-0878.01 | 59197.21522 2473
122328 7590 09/05/2019
BakerHostetler / USAA
1050 Connecticut Avenue, N.W., Suite 1100
Washington, DC 20036
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
09/05/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN PLANTADA, CRAIG A. KINCAID,
ELIZABETH LYNNE JACKSON, and JOHN CARR
____________________

Appeal 2018-004211
Application 13/974,2531
Technology Center 3600
____________________

Before ERIC B. CHEN, BARBARA A. BENOIT, and
PHILLIP A. BENNETT, Administrative Patent Judges.

BENNETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 Appellants’ Brief (“App. Br.”) identifies United Services Automobile
Association (USAA) as the real party in interest. App. Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to a systems and methods for providing a
mortgage realtor portal. Spec., Title. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method for managing initiation of loans comprising:
receiving, proposed loan information at a portal device
with a processor, a data interface and memory with a database,
the proposed loan information relating to a proposed loan and
including financial information, the proposed loan information is
received from a lendee device operated by a lendee;
storing the proposed loan information in the database;
generating proposed loan tasks based on the proposed loan
information, the proposed loan tasks relating to the proposed
loan; and
sending a notification to a relator device, the notification
indicating a missing portion of information or that no more
information is needed from the lendee.
App. Br. 39 (Claims Appendix).

REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2–14.
Claims 1–16 stand rejected under 35 U.S.C. § 112, first paragraph.
Final Act. 14–16.
Claim 17 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Hoffman et al. (US 2003/0220805 A1, published Nov. 27,
2003) (“Hoffman”). Final Act. 16–18.
Claims 1–9, 13, 15, 16, and 18–20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Hoffman and Ford et al. (US
2004/0133493 A1, published July 8, 2004) (“Ford”). Final Act. 19–28.
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Claims 10–12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hoffman, Ford, and Official Notice. Final Act. 28–31.

REJECTION UNDER 35 U.S.C. § 101
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Court instructs us
to “first determine whether the claims at issue are directed to a patent-
ineligible concept,” Id. at 217–18, and, in this case, the inquiry centers on
whether the claims are directed to an abstract idea. If the initial threshold is
met, we then move to the second step, in which we “consider the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. (quoting Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Court describes
the second step as a search for “an ‘“inventive concept”’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Id. (quoting Mayo, 566 U.S. at 72–73).
The USPTO has published revised guidance on the application of
§ 101 consistent with Alice and subsequent Federal Circuit decisions.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
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(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (referred to Step 2A, prong 1 in
the Guidance); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h))
(referred to Step 2A, prong 2 in the Guidance).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then move to Step 2B of the
Guidance. There, we look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 52.
Examiner’s Findings and Conclusion
The Examiner rejects claims 1–20 as being directed to a judicial
exception without significantly more under Alice. Final Act. 2–14. In the
first step of the Alice inquiry, the Examiner determines the claims “are
directed to . . . an abstract idea” (Final Act. 3) and that “[t]he claimed
abstract idea is monitoring the relationship between a lending institution and
a person who is buying a home by performing the act of receiving data,
storing the data, and making status data available to realtors via
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notifications.” Final Act. 3–4. The Examiner concludes that “[t]his kind of
abstract idea can be characterized as being a fundamental economic practice,
a method of organizing human activities, and/or an idea of itself.” Final Act
4. The Examiner further explains that “[t]he claimed abstract idea is reciting
acts that occur in the context of processing a loan for a home mortgage,
which is a fundamental economic practice,” and finds the claims similar to
those found impermissibly abstract in prior court decisions. Final Act. 6–7.
Under Alice step 2, the Examiner determines that the claims “do not
include additional elements that are sufficient to amount to significantly
more than the judicial exception.” Final Act. 9. More specifically, the
Examiner determines:
The claim recitations to the portal device that has a processor, the
data interface, the memory, the non-transitory computer readable
medium, the alert engine and the realtor computing device are
reciting that the method is to be applied by using generic
computing devices that comprise conventional computing
hardware. The claimed portal device and realtor computing
device are generically recited and are not reciting a particular
machine or any kind of specific device. What is claimed in terms
of the computing hardware of the claim does nothing more than
instruct a practitioner to implement the abstract idea using
generic computers/devices and is not sufficient to transform the
abstract idea into a patent eligible invention. This is an attempt
by the applicant to link the performance of the judicial exception
to a particular technological environment, which is
implementation by generic computers that contain conventional
computer structure/hardware. The claims do not result in any
improvement to the functioning of the computer system itself,
and do not effect an improvement in another technology or
technical field. They merely are the tool being used to execute
the abstract idea.
Final Act. 10.
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Appellants’ Contentions
Appellants argue that there are several deficiencies in the rejection.
App. Br. 22–30.2 Appellants argue the claims are not directed to an abstract
idea under Alice step 1 because prior court decisions, such as, for example,
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), Thales
Visionix, Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017), and Visual
Memory LLC v. NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017) support a
conclusion of eligibility. App. Br. 23–24. Appellants assert that like the
inventions those cases, the rejected claims “improve the functioning of
systems for managing mortgages and similar instruments.” App. Br. 25.
Appellants also contend the claims are eligible because they provide
technological improvements and they do not claim a result, but instead claim
specific steps to achieve a desired result. Reply Br. 4 (citing Finjan, Inc. v.
Blue Coat Sys., 879 F.3d 1299 (Fed. Cir. 2018)).

2 Appellants allege procedural error, asserting that the Examiner has failed to
establish a prima facie case of ineligibility because the rejection does not
provide complete reporter citations for cited cases, and for that reason “[t]he
pending rejection fails to clearly articulate the legal bases on which its
conclusions rest.” App. Br. 22–23. We do not find this argument persuasive
because the Examiner provides a thorough explanation of the substantive
basis for the rejection as well as providing at least the names of parties in the
case (mostly drawn from the pertinent sections of the MPEP) supporting the
rejection. Appellant appears to fault the Examiner for not having provided
specific cites to the case reporters. App. Br. 22. While more specific case
citations would be beneficial, we do not view their absence as dispositive of
whether the Examiner has sufficiently put Appellants on notice. Rather,
reviewing the record as a whole, we find the detailed explanations provided
by the Examiner more than sufficient.
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Under Alice step 2, Appellants argue the Federal Circuit’s decision in
BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016) supports eligibility because the claims “contain something
more than an abstract idea.” App. Br. 26. Appellants assert that when
viewed as an ordered combination, the claims “inventively improve inferior
techniques utilized in earlier mechanisms for completing and collecting
mortgage information.” Id. Appellants further argue the claims amount to
significantly more than the abstract idea because they “provide an
unconventional solution” to the problem of inefficiencies in closing of real
estate transactions. App. Br. 26–27. Appellants also assert the Examiner
has failed to provide sufficient evidence that the claims are well-understood,
routine, and conventional. Reply Br. 7. Appellants contend that “the
rejection fails to present evidence supporting its conclusions that claim
elements are nothing more than an abstract idea and/or well-understood,
routine, and conventional.” Id.
Our Review
Applying the guidance set forth in the Guidance, we are not persuaded
the Examiner has erred in rejecting the claims as being directed to patent-
ineligible subject matter. The Guidance instructs us first to determine
whether any judicial exception to patent eligibility is recited in the claim.
The Guidance identifies three judicially-excepted groupings: (1)
mathematical concepts, (2) certain methods of organizing human activity
such as fundamental economic practices, and (3) mental processes. We
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focus our analysis on the second grouping—certain methods of organizing
human activity such as fundamental economic practices.3
Claim 1 recites the following limitations: (1) “receiving proposed
loan information,” (2) “the proposed loan information relating to a proposed
loan and including financial information,” (3) “the proposed loan
information is received from a lendee,” (4) “storing the proposed loan
information,” (5) “generating proposed loan tasks based on the proposed
loan information, the proposed loan tasks relating to the proposed loan,”
(6) “sending a notification to a realtor . . ., the notification indicating a
missing portion of information or that no more information is needed from
the lendee.” App. Br. 39 (Claims Appendix).
We conclude that these limitations, under their broadest reasonable
interpretation, recite the fundamental economic practice of facilitating the
initiation of a mortgage. This is so because the limitations recite basic
operations that would customarily and routinely take place in a mortgage
lending context. For example, limitations (1)–(4) recite gathering and

3 Appellants’ arguments are made to the claims generally. Although in some
instances, Appellants advance arguments directed to one of the independent
claims with particularity, Appellants also note that the same reasoning
applies to the other independent claims. See, e.g., App. Br. 25 (arguing
claim 13, but noting that “similar reasoning applies to elements captured by
claims 1 and 17”); 26 (arguing claim 17, but noting that “[c]laims 1 and 13,
while reciting different aspects, can be analyzed by similar reasoning”); 27–
28 (arguing claim 1, but noting that “[c]laims 13 and 17, while reciting
different aspects, can be analyzed under similar reasoning”). We treat
claim 1 as representative. 37 C.F.R. § 41.37(c)(iv) (“When multiple claims
subject to the same ground of rejection are argued as a group or subgroup by
Appellant, the Board may select a single claim from the group or subgroup
and may decide the appeal as to the ground of rejection with respect to the
group or subgroup on the basis of the selected claim alone.”).
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storing information from the borrower necessary for processing the loan,
including financial information. Such information gathering is typical of
any loan origination process. Similarly, limitation (5) recites the customary
practice of using the received information to determine the tasks necessary
for completing the loan. Limitation (6) reflects the basic and familiar
practice of apprising a realtor of the status of the loan process—e.g., that all
information has been received, or that something is missing. The concepts
encompassed by Appellants’ claims bear substantial similarity to concepts
found to be directed to abstract ideas in prior court decisions. See, e.g.,
Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017)
(concluding that “processing an application for financing a purchase is ‘a
fundamental economic practice long prevalent in our system of
commerce.’”) (internal citations omitted); see also Dealertrack v.
Huber, 674 F.3d 1315 (Fed. Cir. 2012) (finding process of managing a credit
application abstract as a certain method of organizing human activity); and
Mortgage Grader, Inc. v. First Choice Loan Servs., 811 F.3d. 1314, 1324,
(Fed. Cir. 2015) (concluding enabling borrowers to anonymously shop for
loan packages an abstract mental process). Like these processes, the concept
of facilitating mortgage loans recited in Appellants’ claims “is a
fundamental economic practice long prevalent in our system of
commerce.” Alice, 573 U.S. at 216 (citations and internal quotation marks
omitted). Accordingly, we conclude the claims recite a judicial exception of
a fundamental economic practice.
Having determined that the claims recite a judicial exception, our
analysis under the Memorandum turns now to determining whether there are
“additional elements that integrate the judicial exception into a practical
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application.” See Guidance, 84 Fed. Reg. at 54–55 (citing MPEP
§ 2106.05(a)–(c), (e)–(h)). Appellants’ claim 1 recites elements additional
to those identified above. These limitations primarily relate to the computer
equipment that is used to carry out the recited process, and they include
(a) receiving the loan information “at a portal device with a processor, a
data interface[,] and [a] memory with a database,” (b) the loan information
is received “from a lendee device,” (c) the loan information is stored “in [a]
database,” (d) and the notification is sent to a “realtor device.” App. Br. 39
(Claims Appendix).
We conclude that these limitations are insufficient to integrate the
recited judicial exception into a practical application. In particular, these
additional claim limitations amount only to the use of generic hardware to
carry out the abstract idea. It is well-established that mere automation of
manual processes using computers is insufficient to integrate a claim into a
practical application. See Credit Acceptance Corp., 859 F.3d at 1055 (“Our
prior cases have made clear that mere automation of manual processes using
generic computers does not constitute a patentable improvement in computer
technology.”); see also MPEP § 2106.05(a) (“Mere automation of manual
processes, such as using a generic computer to process an application for
financing a purchase” is insufficient) (citing Credit Acceptance Corp, 859
F.3d at 1055). Moreover, the computer hardware equipment recited in the
claims is described generically in the Specification, without significant
meaningful detail about its structure or configuration. See, e.g., Spec. 7
(noting that realtor device and lendee device “may be any computing device
is known in the art”); 7–8 (describing “portal device” as “one or more
hardware and/or software components residing on a server or computer”); 9–
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10 (describing processor, data interface, and memory with a database at a
high level without structural detail).
Nor do we find persuasive Appellants’ attempts to analogize the
claims to those found eligible in DDR, Enfish, Thales, and Finjan.
Appellants argue the claims solve a problem unique to computer networks,
similar to the invention in DDR. We disagree, because the problem solved
by Appellants’ invention—ensuring “all paperwork is being submitted and
approved in a timely fashion” (Spec. 2)—existed prior to the mortgage loan
process moving online. We also do not agree that Appellants’ claims
improve the operation of a computer in a manner similar to those found
eligible in Enfish. The claims in Enfish recited a novel way to structure
data—a self-referential database table—which allowed for improved
indexing and reduced storage requirements. No comparable improvement is
affected by Appellants’ claims. Any improvement recited in the claims is
not to the technology itself, but rather to the abstract process of facilitating
the initiation of mortgage loans.
Nor is Appellants reliance on Thales persuasive. As explained by the
Examiner, “Thales was found eligible due to an unconventional use of a
particular type of censors to be used in tracking a moving object.” Ans. 7.
Appellants’ claims do not recite any similar limitations, and none of the
computer limitations are described as anything but conventional in nature.
Appellants’ claims are also easily distinguishable from those found eligible
in Finjan. The claims in Finjan recited a particular malware protection
technique which provided an improvement to how computers detected
malware—an improvement to how the computer operated. Here, as we have
noted above, the computer components recited in the claims merely improve
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the mortgage initiation process, which is an improvement to the abstract idea
itself.
In sum, we determine the claims bear far more similarity to those
previously found impermissibly abstract by courts, and do not find
meaningful similarities with claims previously found eligible. As such, we
do not find the computer-related limitations are sufficient to integrate the
judicial exception into a practical application.
Having determined the claim is directed to a judicial exception, we
proceed to evaluating whether the claim adds any specific limitation beyond
the judicial exception that is not “well-understood, routine, conventional” in
the field (see MPEP § 2106.05(d)) or simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception. See Guidance.
Our review of the Examiner’s rejection under Step 2B is guided by the
revised examination procedure published online by the USPTO on April 19,
2018, entitled “Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.)” (“Berkheimer Memorandum”), which imposed a new fact finding
requirement for Examiners, as applicable to rejections under § 101. In our
review of the rejection under Step 2B, we consider the same “additional
limitations” as were considered at Step 2A, Prong 2—(1) receiving the loan
information “at a portal device with a processor, a data interface, and a
memory with a database,” (2) the loan information is received “from a
lendee device,” (3) the loan information is stored “in a database,” (4) and the
notification is sent to a “realtor device.” We agree with the Examiner that
these recitations in claim 1 do not add specific limitations beyond what is
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well-understood, routine, and conventional. See Final Act. 9–10.
Specifically, we agree with the Examiner that:
The claim recitations to the portal device that has a processor, the
data interface, the memory, the non-transitory computer readable
medium, the alert engine and the realtor computing device are
reciting that the method is to be applied by using generic
computing devices that comprise conventional computing
hardware. The claimed portal device and realtor computing
device are generically recited and are not reciting a particular
machine or any kind of specific device. What is claimed in terms
of the computing hardware of the claim does nothing more than
instruct a practitioner to implement the abstract idea using
generic computers/devices and is not sufficient to transform the
abstract idea into a patent eligible invention.
Final Act. 10. As noted above, Appellants argue the Examiner has failed to
provide sufficient evidence. We disagree. The Berkheimer Memorandum
provides that the Examiner may support a finding that an additional element
or combination of elements may be supported by “[a] citation to one or more
of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the
well-understood, routine, conventional nature of the additional element(s).”
Berkheimer Memorandum at 4, § III(A)(2). This section of the MPEP notes
that “[r]eceiving or transmitting data over a network, e.g., using the Internet
to gather data” as well as “storing and retrieving information in memory”
have been recognized by courts as being well-understood, routine and
conventional. MPEP § 2106.05(d)(II) (citing, inter alia, OIP Techs., Inc., v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)). The Examiner
cites OIP Technologies in support of the rejection. Ans. 8–9 (“Reference
was made to buySAFE [and] OIP for this finding.”). As such, we disagree
with Appellants that the Examiner’s analysis in Step 2B was insufficient,
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and we agree with the Examiner that the additional limitations in the claims
do not supply an inventive concept.
Because the Examiner correctly concluded claim 1 is directed to a
judicial exception, and because Appellants do not identify any error in the
Examiner’s determination under Step 2B of the Guidance, we sustain the
rejection of representative claim 1 under 35 U.S.C. § 101.

REJECTION UNDER 35 U.S.C. § 112
The Examiner also rejects claims 1–16 for lack of written description
under 35 U.S.C. § 112, first paragraph. Specifically, the Examiner finds that
the limitation “generating proposed loan tasks based on the proposed loan
information,” recited in independent claims 1 and 13, lacks support in the
Specification. Final Act. 15. The Examiner finds that “[a]t most, the
[S]pecification discloses that the system stores tasks in a database, and that
the tasks define policies that need to be complied [with] or the steps that
need to be taken to be able to get a mortgage.” Id.
Appellants assert the Examiner has erred because the Examiner “seeks
to impose an improper in haec verba requirement” and that originally filed
claim 3, as well as Figures 7–8 and pages 13, 15, 18, and 19 of the
Specification provide the necessary support. App. Br. 30–31. We agree.
In order to satisfy the written description requirement, the disclosure
must convey with reasonable clarity to those skilled in the art that the
inventor was in possession of the invention. Purdue Pharma L.P. v.
Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). Originally, filed
claim 1 recited “receiving . . . information relating to a proposed loan . . ..”
Spec. 20 (Claims Section). Originally filed claim 3, depending from claim
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1, recited “generating tasks, the tasks relating to the proposed loan.” Id. We
agree with Appellants that this description is sufficient to support the
limitation “generating proposed loan tasks based on the proposed loan
information.”
The Examiner finds this disclosure insufficient because it does not
clearly state that the generated loan tasks are based on the received
information. However, we agree with Appellants that the Examiner is
imposing an in haec verba requirement in this analysis. In our view, a
person of ordinary skill in the art would have recognized Appellants’
possessed basing the loan tasks on the received loan information because the
ordinarily skilled artisan would have understood that generating tasks
relating to a proposed loan would necessarily rely on (i.e., be based on)
information about the loan. Accordingly, we are persuaded the Examiner
has erred in rejection the lacks under 35 U.S.C. § 112, first paragraph.4

REJECTION UNDER 35 U.S.C. § 102(b)
Claim 17 stands rejected under 35 U.S.C. § 102(b) as being
anticipated by Hoffman. Final Act. 17–19 (citing Hoffmann ¶¶ 6, 10, 99,
104, and 115).
Appellants argue the Examiner has erred for two reasons:

4 Appellants’ Specification also describes:
The lender requests that the borrower provide the
necessary information and documents. The information
and documents are saved to the system, which may also
generate a record of outstanding information and
documents that the lender needs to receive.
Spec. 2. Although not specifically cited by Appellants, we find this
disclosure additionally supports the allegedly deficient limitation.
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[1] Hoffman does not describe the “portal device” and/or “a
realtor computing device” used by a realtor or other parties. The
“system” of Hoffman is not a portal device, and the Hoffman's
figures make clear it is a server-side solution, rather than a
solution disclosing both server and client side (the portal device
being used as or by a client).
[2] Further, while para. [0010] of Hoffman uses the term
“contractual tasks,” Hoffman does not identically describe the
claimed tasks as constructed in view of the specification and
therefore also fails to anticipate these aspects.
App. Br. 32 (bracketed numbering added).
We are not persuaded of Examiner error. Appellants’ argue Hoffman
fails to disclose any “portal device” or “realtor computing device” because it
describes a “server-side solution.” App. Br. 32. The Examiner finds that the
system described in Hoffman discloses a “portal device” because it discloses
the use of a “host server 150” that “allows a realtor to monitor and track the
progress and status of a real estate transaction.” Final Act. 18 (citing ¶¶ 78,
80). Even if Appellants are correct that Hoffman discloses a “server-side”
solution, this would mean only that the processing takes place on the server
and not on a client that makes requests to the server. Appellants do not
explain nor is it apparent to us, why such a “server-side solution” is
excluded from the scope of claim 17.
Appellants further argue that the “contractual tasks” described by
Hoffman do not disclose the recited “mortgage application tasks” because
they are not identical to the “claimed tasks as constructed in view of the
specification.” App. Br. 32. This argument is deficient because Appellants
do not explain why scope of the recited “mortgage application tasks”
excludes Hoffman’s disclosed “contractual tasks.” Appellants suggest that
the embodiments in the Specification lend a narrowing meaning to
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“mortgage application tasks,” but Appellants do not actually propose any
definition for the disputed term. Given that a mortgage is a form of a
contract, and that Hoffman discloses that mortgages are included in the real
estate transactions, we agree with the Examiner that the “contractual tasks”
disclosed by Hoffman include the recited “mortgage application tasks.”
Accordingly, Appellants’ arguments do not persuade us of Examiner
error, and we sustain the rejection of claim 17 under 35 U.S.C. § 102(b).

REJECTIONS UNDER 35 U.S.C. § 103
Claim 1
The Examiner rejects independent claims 1 and 13 as being obvious
over Hoffman and Ford. In so doing, the Examiner finds Hoffman teaches
most of the recited limitations, and relies on Ford to cure Hoffman’s
deficiencies with respect to claim 1. Claim 1 recites the limitation “the
proposed loan information is received from a lendee device operated by a
lendee.” The Examiner finds that Hoffman teaches this limitation because it
teaches “that received information regarding a loan is stored by a host server
150.” Final Act. 20 (citing Hoffman ¶ 80).
Claim 1 also recites “generating proposed loan tasks based on the
proposed loan information, the proposed loan tasks relating to the proposed
loan.” The Examiner finds Hoffman teaches this limitation because it
“discloses that activity/task information that is required to be completed to
processing a mortgage transaction is used in the process.” Final Act. 20
(citing Hoffman ¶¶ 10, 99, and 104).
The Examiner acknowledges that while Hoffman teaches sending
notifications (Final Act. 20 (citing Hoffman ¶¶ 111, 115)), the reference
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does not teach notifications “indicating a missing portion of information or
that no more information is needed from the lendee.” Final Act. 21. The
Examiner turns to Ford, finding that it teaches the recited notifications. Id.
(citing Ford ¶¶ 23, 26, 31, 32, and 40). The Examiner finds it would have
been obvious5 to include the content of Ford’s notifications in Hoffman’s
notification e-mails because “[o]ne of ordinary skill in the art of processing
loan information for mortgages understands and appreciates that initially
submitted loan information may be incomplete because certain information
is missing.” Final Act. 23.
Appellants argue three limitations in claim 16 are not taught or
suggested by the references. We address each in turn. Appellants first argue
Hoffman does not teach “the proposed loan information is received from a
lendee device operated by a lendee.” App. Br. 34. Appellants’ argument is
not persuasive because they do not adequately explain how the cited portions
of Hoffman are deficient.
Hoffman teaches that a host server “contains instructions for sorting
through . . . information provided by a third party user 160, such as a buyer
or seller.” Hoffman ¶ 80. Hoffman further teaches that real estate
transactions facilitated by the system may involve mortgages. Hoffman
¶¶ 96 (“mortgage agents”), 141 (“mortgage calculator”). As such, a person
having ordinary skill in the art would have understood that the information

5 Although Appellants assert that “motivation to combine references is not
provided at any point,” (App. Br. 37) we find the Examiner has set forth a
rationale for why a skilled artisan would have made the combination.
6 Appellants make similar arguments with respect to independent claims 1
and 13. Except for claims 10 and 11, Appellants present no arguments for
any dependent claims. Our decision as to claim 1, therefore, is dispositive as
to the rejections of claims 1–9, 13–16, and 18–20.
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provided by a buyer using Hoffman’s system would have included proposed
loan information as recited in the limitation.
Appellants further argue Hoffman does not teach “generating
proposed loan tasks based on the proposed loan information, the proposed
loan tasks relating to the proposed loan” because “the Office offers no
reasoning for how generation based on the claimed information is inherent.”
App. Br. 34. We do not find this argument persuasive because it does not
address the specific teachings in Hoffman cited by the Examiner. In
paragraph 99, Hoffman describes the use of an activity map that “includes
such information as critical dates, real estate transaction related activities,
and deadlines for the real estate transaction related activities.” Hoffman
¶ 99. Hoffman further teaches that the activity map may be generated
“automatically” using information previously received from users. Hoffman
¶ 100. Hoffman further teaches that the activity map may include “tasks
pertaining to the real estate transaction.” As we noted above, Hoffman
teaches that the real estate transactions processed by the system may involve
mortgages. Taken together, a person of ordinary skill in the art would have
recognized that the tasks in the activity map would have included mortgage-
related tasks. As such, we are not persuaded the Examiner erred in finding
Hoffman teaches or suggests this limitations.
The third limitation challenged by Appellants is the limitation of
“sending a notification to a realtor device, the notification indicating a
missing portion of information or that no more information is needed from
the lendee.” App. Br. 34. As noted above, the Examiner finds that although
Hoffman teaches notifications, it does not teach notifications “indicating a
missing portion of information or that no more information is needed from
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the lendee,” and relies on Ford to cure Hoffman’s deficiencies. Final
Act. 21 (citing Ford ¶¶ 23, 26, 31, 32, and 40).
Appellants argue the cited portions of Ford do not describe “a missing
portion of information”, but rather that information has already be received
or is modified. App. Br. 34. We are not persuaded of Examiner error. The
disputed limitation recites that the notification indicates either (1) that a
missing portion of information is needed, or (2) that no more information is
needed from the lendee. As such, the prior art need only teach or suggest
one of these two alternatives. Moreover, the notification need only indicate
one of the alternatives, the claim does not require that the notification
explicitly state the alternatives.
Ford teaches a “system [that] provides a method for a participant to
track, monitor and log milestones and tasks in the real estate transaction
process from inception through post-closing activities.” Ford ¶ 31. In
Ford’s system “all of the participants are able to easily identify the critical
next steps in the transaction” and “[t]ransaction milestones are automatically
updated when documents have been delivered to the system 716.” Ford
¶ 32. Ford also teaches “notifying a participant [] when the status of the
development of said real estate transaction is updated.” Ford ¶ 40. One
milestone described by Ford is the closing of the real estate transaction. See
Ford ¶ 33. Because the closing of the transaction is a milestone, and because
the closing of a transaction provides an indication that additional loan
documents are not needed, we agree with the Examiner that Ford teaches, or
at least suggests, “the notification indicating . . . that no more information is
needed from the lendee.” Accordingly, we are not persuaded the Examiner
erred, and we sustain the rejection of claim 1 under 35 U.S.C. § 103(a). For
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the same reasons, we also sustain the rejections of claims 2–9, 13–16, and
18–20 which are not argued separately.
Claim 10
Appellants argue separately for patentability of claim 10, which was
rejected as obvious over Hoffman, Ford, and Official Notice. Claim 10
recites:
10. The method of claim 8 further comprising:
geotagging a property relating to the proposed loan;
determining a location of the realtor device;
generating an alert when the location of the realtor device
is within a specified distance of the property, the alert is
generated via the alert engine.
App. Br. 40 (Claims Appendix). The Examiner finds that Hoffman and Ford
do not teach the limitations of claim 10, and instead takes Official Notice
that “geofencing and geotagging is well known in the art, including for real
estate.” Final Act. 28. The Examiner provides five prior art references as
allegedly substantiating the assertion of Official Notice. Final Act. 29–30.
Appellants argue the Examiner’s reliance on Official Notice is
improper because it provides no reasons that a person of ordinary skill in the
art would have modified Hoffman and Ford to achieve the invention as
claimed. App. Br. 37–38. We agree. The Examiner’s finds that geofencing
and geotagging were well-known. Even if the five references identified by
the Examiner support this assertion of Office Notice, the Examiner has not
sufficiently explained how each and every limitation in claim 10 is taught,
suggested, or otherwise rendered obvious by this knowledge. We also agree
with Appellants that the Examiner has failed to provide any rationale for
why a person of ordinary skill in the art would have supplemented the
teachings of Hoffman and Ford with geotagging and geofencing. As such,
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we agree that the Examiner has erred in rejecting claim 10, as well as claims
11 and 12 which depend therefrom, and we do not sustain their rejection
under 35 U.S.C. § 103(a).

DECISION
We affirm the Examiner’s rejection of claims 1–20 under 35 U.S.C.
§ 101.
We reverse the Examiner’s rejection of claims 1–16 under 35 U.S.C.
§ 112, first paragraph.
We affirm the Examiner’s rejection of claim 17 under 35 U.S.C.
§ 102(b)
We affirm the Examiner’s rejection of claims 1–9, 13–16, and 18–20
under 35 U.S.C. § 103(a).
We reverse the Examiner’s rejection of claims 10–12 under 35 U.S.C.
§ 103(a).
Because we have affirmed at least one ground of rejection for each
claim on appeal, we affirm the Examiner's decision to reject the claims.
37 C.F.R. § 41.50(a)(1).
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