UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/828,440 03/14/2013
23505 7590 03/06/2019
CONLEY ROSE, P.C.
575 N. Dairy Ashford Road
Suite 1102
HOUSTON, TX 77079
FIRST NAMED INVENTOR
Gerald A. MORGAN
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
7065-03600 5406
EXAMINER
ANDERSON, MICHAEL W
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
03/06/2019 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):
pathou@conleyrose.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD A. MORGAN,
STANLEY G. SCHWARZ, and ALAN VORDERMEIER, JR.
Appeal2018-000934
Application 13/828,440
Technology Center 3600
Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JUSTIN BUSCH, Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1--4 and 7-19, which constitute all the
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b ). Claims 5 and 6 were cancelled previously.
We affirm.
1 Appellants identify the real party in interest as Gordon*Howard
Associates, Inc. App. Br. 3.
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Application 13/828,440
CLAIMED SUBJECT MATTER
"An applicant wishing to procure financing for a vehicle purchase or
vehicle loan refinancing may submit a number of loan requests to a plurality
of lending institutions. However, the process of filling out multiple loan
requests, some of which may not be standard, can be time consuming and
inefficient." Spec. ,r 1.
Appellants' invention relates to matching lending institutions to a loan
request seeking a vehicle purchase or refinance loan by way of a matching
software executing on a handheld computing device. Id. ,r 18. In one
embodiment, once a loan request is received, a "lead source service provider
server may begin with an initial filtering process which discards the [loan
request] if it fails to meet one or more minimum thresholds .... [T]he
thresholds may be legal, such as a minimum age." Id. ,r 54.
Claim 1 is representative and reproduced below:
1. A method comprising:
matching a loan applicant with at least one lending
institution, the matching by a lead source service provider server,
the matching comprising:
providing the loan applicant with a matching software, the
matching software for use on a handheld computing device;
accepting a loan request from the loan applicant by way of
a transmission from the matching software;
filtering the loan request based on legal validity; and if
valid;
communicating with the at least one lending institution,
the communication with regard to matching the loan request to
at least one lending institution;
receiving an indication of consideration of the loan request
from the at least one lending institution, wherein the indication
of consideration is prior to making an offer; and
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issuing an alert of a match based on the indication of
consideration to the handheld computing device.
REJECTIONS 2
Claims 1--4 and 7-19 stand rejected under 35 U.S.C. § 101 as being
directed to ineligible subject matter. Ans. 2-3.
Claims 1--4, 7, 9-11, 13-16, 18, and 19 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Reddin (US 2006/0100944 Al; May 11,
2006), Dubinsky (US 2006/0080599 Al; Apr. 13, 2006), and Johnson (US
2010/0312691 Al; Dec. 9, 2010). Final Act. 3-9.
Claims 8, 12, and 17 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Reddin, Dubinsky, Johnson, and Weiss (US
2011/0040630 Al; Feb. 17, 2011 ). Final Act. 9-10.
ANALYSIS
THE PATENT INELIGIBLE SUBJECT MATTER REJECTION
Principles of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "' [L Jaws of nature, natural phenomena, and abstract
ideas' are not patentable." Mayo Collaborative Servs. v. Prometheus Labs.,
2 Claim 19 had been rejected under 35 U.S.C. § 112(b) as being indefinite.
Final Act. 2. The Examiner has withdrawn the rejection of this claim. Adv.
Act. 2; Ans. 3.
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Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014)
(citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we
first determine what concept the claim is "directed to." See Alice, 573 U.S.
at 218-19 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
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statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). That
said, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (brackets in original) ( quoting Mayo,
566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention." Id.
In January 2019, the USPTO published revised guidance on the
application of§ 101. 2019 REVISED PA TENT SUBJECT MATTER ELIGIBILITY
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GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidelines"). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) §§ 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception, and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 84 Fed. Reg. 50.
Step 1 of the Guidelines
Under the Guidelines, we must first determine whether the claims fall
within the four statutory categories of patent subject matter identified by 35
U.S. C. § 101. Independent claim 1 recites a method comprising matching a
loan application with a lending institution where a lead source service
provider server performs the matching. To perform the matching, the lead
source service provider server (1) provides a loan applicant with matching
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software for use on a handheld computing device; (2) filters a loan request of
the loan applicant after receiving the loan request by way of a transmission
from the matching software; (3) communicates with a lending institution, (4)
receives an indication of consideration of the loan request from a lending
institution after communicating with the lending institution; and ( 5) issues
an alert of a match to the handheld computing device. Steps (3) through (5)
occur if the loan request is legally valid.
Claim 1 recites a method and, thus, claim 1 is directed to one of the
four statutory categories of§ 101. Next, we must determine whether the
claim is directed to a judicial exception, such as an abstract idea. See Alice,
573 U.S. at 218. To this end, we must determine whether the claim (1)
recites a judicial exception and (2) fails to integrate the exception into a
practical application. See 84 Fed. Reg. at 54--55. If both elements are
satisfied, the claim is directed to a judicial exception under the first step of
the Alice/Mayo test, which the Guidelines refer to as Revised Step 2A. See
id.
Revised Step 2A, Prong 1 of the Guidelines
In the rejection, the Examiner concludes the claims are "directed to
the abstract idea of matching lenders with loan applicants, which is both a
fundamental economic practice and a method of organizing human
activities." Ans. 2.
To determine whether a claim recites an abstract idea, we (1) identify
the claim's specific limitations that recite an abstract idea, and (2) determine
whether the identified limitations fall within certain subject matter
groupings, namely (a) mathematical concepts; (b) certain methods of
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organizing human activity; or (c) mental processes. See 84 Fed. Reg. at 52.
Certain methods of organizing human activity include fundamental
economic principles or practices (including hedging, insurance, mitigating
risk); commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or relationships
or interactions between people (including social activities, teaching, and
following rules or instructions). See id.
Here, we find the body of claim 1 comprises steps for "matching a
loan applicant with at least one lending institution," which informs our
conclusion that the claim, considered as a whole, is directed to a certain
method of organizing human behavior, i.e., a fundamental economic
practice. In particular, claim 1 recites (1) accepting a loan request from a
loan applicant, (2) filtering the loan request based on legal validity, and if
valid, (3) communicating with a lending institution, (4) receiving an
indication of consideration of the loan request from the lending institution,
and ( 5) issuing an alert of a match based on the indication of consideration.
These steps recite a fundamental economic practice.
InLendingTree, LLC v. Zillow, Inc., 656 F. App'x 991,993 (Fed.
Cir. 2016) (non-precedential), the court determined claims directed to
"coordinating loans" were no more than a fundamental economic practice.
As noted by the court, "the concept of applying for loans and receiving
offers is also long prevalent in our financial system." Id. at 996 (citing
Alice, 573 U.S. at 221; Bilski, 561 U.S. at 611); see also buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1353-54 (Fed. Cir. 2014) (determining that
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claims directed to "contractual relations" constituted a fundamental
economic practice long prevalent in our system of commerce); Cf Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1318, 1324
(Fed. Cir. 2016) ( finding claims directed to the idea of "anonymous loan
shopping" to be abstract); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1331,
1333 (Fed. Cir. 2012) (determining claims directed to the concept of
"processing information through a clearinghouse" were abstract). The
Federal Circuit further explained that merely using "a broker (i.e., a
computer program on a loan-processing computer) to organize the process is
of no consequence," because using a third-party intermediary "'is also a
building block of the modem economy.'" LendingTree, 656 F. App'x at 993
(quoting Alice, 573 U.S. at220) (citations omitted).
Appellants' claim 1 steps that match a loan applicant with at least one
lending institution are similar to other claims the Federal Circuit found to be
fundamental economic practices or other abstract ideas. Thus, contrary to
Appellants' contentions concerning claim 1 (Reply Br. 3), claim 1 recites an
abstract idea, namely a fundamental economic practice.
Appellants also direct attention to (1) claim 4, which depends from
claim 1 and recites encrypting the loan request prior to providing the request
to the lead source service provider server, and (2) claim 8, which depends
from claim 1 and recites issuing the alert by way of a short message service
(SMS), an electronic email message, or a matching software notification. Id.
Appellants argue claims 4 and 8 are not directed to a fundamental economic
practice. Id. We disagree.
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Claims 4 and 8 each include all the limitations of claim 1. See
37 C.F.R. § 1.75. Thus, for the reasons discussed above concerning claim 1,
we find claims 4 and 8 each include steps that recite a fundamental
economic practice.
Revised Step 2A, Prong 2 of the Guidelines
Although the claim recites an abstract idea (i.e., a fundamental
economic practice), we must determine whether the abstract idea is
integrated into a practical application, namely whether the claim applies,
relies on, or uses the abstract idea in a manner that imposes a meaningful
limit on the abstract idea, such that the claim is more than a drafting effort
designed to monopolize the abstract idea. See 84 Fed. Reg. at 54--55. To do
this, we evaluate the "additional elements individually and in combination to
determine whether they integrate the exception into a practical application,
using one or more of the considerations laid out by the Supreme Court and
the Federal Circuit." Id. at 55.
Notably, the only additional limitations recited in claims 1, 4, and 8
are the "lead source service provider server," the "matching software," the
"handheld computing device," "encrypt[ing] the loan request" ( claim 4), and
the particular method of communicating the alert ( claim 8). The rest of the
limitations recite steps relating to matching a loan applicant to a lender,
including accepting a loan request, verifying the legal validity of the request,
and, if valid: communicating the request to a lender, receiving a lead from
the lender, and alerting the applicant of the match. Thus, we evaluate the
additional limitations to determine whether they integrate the abstract idea
into a practical application.
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An improvement in the functioning of a computer, or an improvement
to other technology or technical field can indicate that the additional
elements integrate the exception into a practical application. See id. ( citing
MPEP § 2106.05(a)). Appellants direct attention to claims 4 and 8 and
contend the claims effect an improvement in the technical field of matching
a loan applicant with a lending institution. Reply Br. 4. We disagree.
Claims 4 and 8 recite nothing more than using a generic computer to,
respectively, encrypt the loan request and issue the alert using, e.g., e-mail.
Appellants do not describe an advance in hardware or software that, for
example, causes a computer to operate faster or more efficiently. Cf Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). Nor do
Appellants identify any recitation in the claims that is directed to an
improvement to a problem specifically arising in the realm of computer
networks, such as DDR Holdings' overriding of routine and conventional
sequence of events ordinarily triggered by clicking a hyperlink. DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014).
Rather, claims 4 and 8 are directed to an "economic or other [process] for
which a computer is used in its ordinary capacity" as a tool. Enfzsh, 822
F.3d at 1336. More specifically, claim 4 does not purport to improve
encryption, but merely recites at a high level of generality that the data is
encrypted prior to transmission. Similarly, claim 8 does not purport to
improve any of the recited communication means and the data being
transmitted does not require any special handling; rather, claim 8 merely
recites various optional communication methods for transmitting the data
that implemented on known generic computers and networks. Thus, here, as
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in Alice, the claims "do not ... purport to improve the functioning of the
computer itself or effect an improvement in any other technology or
technical field." Alice, 573 U.S. at 225.
The machine-or-transformation test can also indicate that the
additional elements integrate the exception into a practical application. See
Fed. Reg. at 55 (citing MPEP §§ 2106.05(b),(c)). Accord Ultramercial, Inc.
v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (quoting Bilski, 561 U.S.
at 594). Under the machine-or-transformation test, a claimed process is
patent-eligible if: (1) it is tied to a particular machine or apparatus, or (2) it
transforms a particular article into a different state or thing. In re Bilski, 545
F.3d 943, 954 (Fed. Cir. 2008), aff'd sub nom. Bilski, 561 U.S. at 593.
We find unavailing Appellants' contention the claims "[pass] the
Flook test for patent eligible subject matter ... [and] the Bilski test for patent
eligible subject matter." Reply Br. 4. To the extent Appellants contend
claim 1 transforms data by converting a loan request to an indication of
consideration of the loan request, our reviewing court guides that "[t]he
mere manipulation or reorganization of data, however, does not satisfy the
transformation prong." CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011). To the extent Appellants argue the
handheld device is a particular machine, we disagree. The recited handheld
device is recited at a high level of generality, and Appellants fail to explain
how the claimed functionality is tied to the generically recited device, as
required by Bilski. Therefore, we conclude claim 1 fails to satisfy Bilski 's
machine-or-transformation test.
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Rather, for the reasons discussed above, we determine Appellants'
claims fail to integrate the abstract idea into a practical application because
the additionally recited elements (i.e., lead source service provider server,
matching software, handheld device, encryption, and e-mail) amount to no
more than instructions to implement the abstract idea of loan matching on
generically recited communication devices and networks. See Fed. Reg. at
55 (citing MPEP § 2106.05(±)). Providing the matching software is
insignificant pre-solution activity to obtain the loan request details necessary
to perform the loan match. Id. (citing MPEP § 2106.05(g)). In combination,
the additional elements do not apply the abstract idea in a meaningful way,
but instead simply "generally link the use of a judicial exception to a
particular technological environment or field of use." Id. ( citing MPEP
§ 2016.05(h)).
Accordingly, claim 1 does not integrate the judicial exception into a
practical application.
Step 2B of the Guidelines
Because the claim does not integrate the judicial exception into a
practical application, we determine whether additional elements of the claim,
individually or in combination, provide an inventive concept. See Fed. Reg.
at 56. To this end, we determine whether the additional elements (1) add a
specific limitation or combination of limitations that is not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present; or (2) simply append well-understood,
routine, conventional activities previously known to the industry, specified
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at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present. Id.
The Examiner concludes under step two in the Mayo/Alice framework
that the additional elements of claim 1 other than the abstract idea amount
"to no more than mere instructions to implement the idea on a computer."
Ans. 2. According to the Examiner, viewed as a whole, these additional
elements do not qualify as significantly more than the abstract idea. Id.
The claims recite the additional elements at a high level of generality
and Appellants do not persuasively argue that these elements operate in an
unconventional manner. The disclosure describes the computer elements
and matching software in generalities. See, e.g., Spec. ,r,r 15-16, 22-25, 63-
64; Fig. 3. Contrary to Appellants' contention (Reply Br. 2-3), using a
server for "providing," "accepting," "filtering,"3 "communicating,"
"receiving," and "issuing" information simply takes advantage of some of
the "most basic functions of a computer." Cf Alice, 573 U.S. at 225 (the
"use of a computer to obtain data, adjust account balances, and issue
automated instructions; all of these computer functions are 'well-understood,
routine, conventional activit[ies]' previously known to the industry.")
(quoting Mayo, 566 U.S. at 71-73); Benson, 409 U.S. at 65 (noting that a
"computer operates then upon both new and previously stored data. The
3 Although Appellants' claims recite a step of "filtering," Appellants' claims
do not recite an arrangement of elements to filter content beyond what is
well-understood, routine, or conventional activity previously known to the
industry. Contra BASCOM Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341 (2016). Appellants do not argue to the contrary.
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general-purpose computer is designed to perform operations under many
different programs.").
Thus, "the claims at issue amount to 'nothing significantly more' than
an instruction to apply the abstract idea ... using some unspecified, generic
computer." Alice, 573 U.S. at 225-26 (citing Mayo, 566 U.S. at 71).
Conclusion
Accordingly, we are not persuaded the Examiner erred in rejecting
claims 1--4 and 7-19 as directed to ineligible subject matter under 35 U.S.C.
§ 101.
THE OBVIOUSNESS REJECTIONS
Matching
The Examiner finds that Reddin discloses many recited elements of
independent claim 1 including, among other things, matching a loan
applicant with a lending institution by a "lead source service provider
server" ( a financial coordinator's computer matching engine). Final Act. 3
(citing Reddin Abstract; ,r 20; Fig. 2). The Examiner also finds Reddin's
financial coordinator receives a loan request from the loan applicant, the
financial coordinator (1) filters the loan request, (2) communicates with at
least one lending institution with regard to matching the loan request to the
lending institution, (3) receives an indication of consideration of the loan
request from the lending institution, and ( 4) issues an alert of a match based
on the indication of consideration. 4 Final Act. 3--4 ( citing Reddin Abstract;
,r,r 17, 76-78, 80, 91; Figs. 1, 10).
4 We note steps (2}-(4) occur if the loan request is valid. Thus, steps (2}-(4)
of method claim 1 are conditional and, therefore, need not be satisfied. See
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Appellants assert Reddin' s financial coordinator determines a match
between a consumer's qualification form (QF) and the lending institution
before sending the QF to the lending institution. App. Br. 14 ( citing Reddin
,r 66). Appellants argue a lending institution determines a match in
Appellants' invention because the lending institution determines whether to
consider a loan request. Id. at 15-16 (citing Spec. ,r 56). Appellants argue,
even if Reddin represents what the Examiner suggests, the combination of
Reddin, Dubinsky, and Johnson does not teach:
communicating with the at least one lending institution,
the communication with regard to matching the loan request to
at least one lending institution;
receiving an indication of consideration of the loan request
from the at least one lending institution, wherein the indication
of consideration is prior to making an offer,
as recited in claim 1. Id.
We are unpersuaded of error. Appellants' assertion that the claimed
lending institution determines a match whereas Reddin' s financial
coordinator (the claimed "lead source service provider server") determines a
Ex parte Schulhauser, Appeal 2013-007847, 2016 WL 6277792, at *3-5
(PT AB Apr. 28, 2016) (precedential) (holding that in a method claim, a
conditional step does not need to be performed if the condition precedent is
not met); see also MPEP § 2111.04(II) ( citing Schulhauser).
Independent claims 11 and 16 are, respectively, apparatus and product
claims. The broadest reasonable interpretation of an apparatus and product
claim with structure that performs steps (2}-(4) still requires structure for
performing steps (2}-( 4) should the condition occur. See Schulhauser at
14--15. Therefore, our construction of claims 11 and 16 differs from method
claim 1 because the structure, namely the structure configured to perform the
recited functions, is present in the system regardless of whether the loan
request is valid.
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match is not commensurate with the scope of the claim. Notably, claim 1
explicitly recites a match "by a lead source service provider server." Claim
1 further recites the server issues an alert of a match when the server
receives an indication of consideration of the loan request from the at least
one lending institution.
Reddin's financial coordinator receives a consumer's QF. Reddin
,r 52; Fig. 1. Reddin's financial coordinator then matches the consumer with
a financial service provider or wholesale investor based on the information
provided in the consumer's QF and a list of criteria presented by the
financial service provider. Id. ,r 54; Fig. 1. Reddin, then, at least suggests
the financial coordinator5 ( the claimed "lead source service provider server")
communicates with at least one financial service provider or wholesale
investor (the claimed "lending institution"), the communication with regard
to matching the consumer's QF (the claimed "loan request") to at least one
lending institution.
Reddin' s financial service provider, upon receiving the consumer's
QF from the financial coordinator, "can ... provide ... a lead to an offer
.... Alternatively, the financial service providers ... may elect to not make
any offers." Reddin ,r 55; Fig. 1. Reddin, therefore, teaches the financial
coordinator receives an indication of consideration of the consumer's QF
5 Reddin discloses its financial coordinator may be "a computerized loan
originator (CLO)." Reddin ,r 9. Moreover, to the extent Reddin's financial
coordinator is a person or entity, Reddin clearly discloses embodiments that
perform the financial coordinator functions using "a computer matching
engine." E.g., Reddin ,r,r 25-29, 90-94, Abstract, Figs. 2, 7 A (identifying a
"Financial Coordinator with Matching Engine," suggesting the financial
coordinator is or includes the computer system and processes).
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from a financial service provider, wherein the indication of consideration is
prior to making an offer (i.e., the indication is a lead to an offer rather than
an offer itself).
Legal Validity
The Examiner acknowledges that Reddin' s filtering of the loan
request is not based on legal validity and, therefore, the Examiner cites
Dubinsky for teaching this feature. Final Act. 4 ( citing Dubinsky Fig. 7);
Ans. 4 (additionally citing Dubinsky ,r,r 56-57). According to the Examiner,
Dubinsky's testing of a document to ensure the document complies with
applicable legal and internal standards teaches or suggests legal validity
filtering. Ans. 4.
Appellants assert Dubinsky's auditing of documents involves
determining whether a document's legal language complies with legal rules
and regulations. App. Br. 15-17; Reply Br. 17. Appellants argue
Dubinsky's determination is not filtering a loan request based on legal
validity. App. Br. 17. According to Appellants, although Dubinsky's
document may comply with legal rules and regulations, the document may
be invalid if executed by a minor. Id.
We begin by construing the term "legal validity" recited in claim 1.
During examination, claims are given their broadest reasonable
interpretation consistent with the specification. See In re Am. Acad. Of Sci.
Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Appellants' Specification
does not disclose the term "legal validity." See Spec. Nor does the term
"legal validity" appear in the claims as originally filed, but rather was added
during prosecution. See Response to Office Action 6 (Claims App'x) (Mar.
18
Appeal2018-000934
Application 13/828,440
18, 2014). Appellants' Specification discloses a "lead source service
provider server may begin with an initial filtering process which discards the
lead if it fails to meet one or more minimum thresholds. In one
embodiment, the thresholds may be legal, such as a minimum age." Spec.
,r 54 ( emphasis added). 6 Our emphasis underscores that this form of legal
validity is merely exemplary. Thus, although this description informs our
construction of the term "legal validity," it does not limit our interpretation.
We, therefore, construe the term "legal validity" in accordance with
its plain meaning. The term "valid" is defined as "legally sufficient; binding
." BLACK'S LAW DICTIONARY 1690 (adj. def. 1) (9th ed.
2009). Thus, we construe the term "legal validity" as legally binding.We see
no error in the Examiner's reliance on Dubinsky' s auditing to teach or
suggest filtering based on legal validity. Dubinsky teaches testing a
document against a rule-set "to make sure the document complies with the
applicable legal and internal standards to ensure that the document is
appropriately binding on the parties." Dubinsky ,r 57. Dubinsky in
combination with Reddin, then, at least suggests testing the document based
on legal validity.
Conclusion
For the above reasons, Appellants do not persuade us of error in the
rejection of claim 1. Accordingly, we sustain the rejections of
(1) independent claim 1; (2) independent claims 11 and 16, which are argued
relying on the arguments made for claim 1 (see App. Br. 17-18); and (3)
6 Appellants' Specification discloses a "lead" as being a submitted loan
request. Id. ,r 53.
19
Appeal2018-000934
Application 13/828,440
claims 2--4, 7-10, 12-15, and 17-19, which depend, directly or indirectly,
from one of claims 1, 11, and 16, and were not separately argued with
particularity (see id. at 11-18).
CONCLUSION
The Examiner did not err in rejecting claims 1--4 and 7-19 under
35 U.S.C. §§ 101 and 103.
DECISION
We affirm the Examiner's decision to reject claims 1--4 and 7-19.
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.
§ 4I.50(f).
AFFIRMED
20
Application/Control No. Applicant(s)/Patent Under Patent
Appeal No.
13/828,440 2018-000934
Notice of References Cited
Examiner Art Unit
Page 1 of 1
3694
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Black's Law Dictionary, Deluxe Ninth Edition, Page 1690
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Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
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