Skip to main content

Full text of "USPTO Patents Application 09998152"

See other formats


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 223 1 3-1450 
www.nspto.gov 



A 



APPLICATION NO. 


FILING DATE 


FIRST NAMED INVENTOR 


ATTORNEY DOCKET NO. 


CONFIRMATION NO. 


09/998,152 


11/30/2001 


Donald P. Coleman 


010520 


5007 



26285 7590 03/25/2004 

KIRKPATRICK & LOCKHART LLP 
535 SMITHFIELD STREET 
PITTSBURGH, PA 15222 



EXAMINER 



RAYYAN, SUSAN F 



ART UNIT 



PAPER NUMBER 



2177 ' 

DATE MAILED: 03/25/2004 



Please find below and/or attached an Office communication concerning this application or proceeding. 



PTO-90C (Rev. 10/03) 





Application No. 


Applicant(s) 






09/998,152 


COLEMAN, DONALD P. 


Office Action Summary 








Examiner 

Susan F. Rayyan 


Art Unit 

2177 





- The MAILING DATE of this communication appears on the cover sheet with the correspondence address - 
Period for Reply 



A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) FROM 
THE MAILING DATE OF THIS COMMUNICATION. 

- Extensions of time may be available under the provisions of 37 CFR 1 . 1 36(a). In no event, however, may a reply be timely filed 
after SIX (6) MONTHS from the mailing date of this communication. 

- If the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely. 

- If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication. 

- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 1 33). 
Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any 
earned patent term adjustment. See 37 CFR 1 .704(b). 

Status 

1 )K Responsive to communication(s) filed on 30 November 2001 . 
2a)D This action is FINAL. 2b)IEl This action is non-final. 

3) D Since this application is in condition for allowance except for formal matters, prosecution as to the merits is 

closed in accordance with the practice under Ex parte Quayle, 1935 CD. 1 1 , 453 O.G. 213. 

Disposition of Claims 

4) £3 Claim(s) 1-32 is/are pending in the application. 

4a) Of the above claim(s) is/are withdrawn from consideration. 

5) D Claim(s) is/are allowed. 

6) 13 Claim(s) 1-32 is/are rejected. 

7) Q Claim(s) is/are objected to. 

8) D Claim(s) are subject to restriction and/or election requirement. 

Application Papers 

9) E3 The specification is objected to by the Examiner. 

10) IEI The drawing(s) filed on 30 November 2001 is/are: a)|El accepted or b)D objected to by the Examiner. 

Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1 .85(a). 
Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d). 

1 1) D The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152. 

Priority under 35 U.S.C. § 119 

12) D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or(f). 
a)D All b)D Some * c)D None of: 

1. Q Certified copies of the priority documents have been received. 

2. Q Certified copies of the priority documents have been received in Application No. . 

3. Q Copies of the certified copies of the priority documents have been received in this National Stage 

application from the International Bureau (PCT Rule 17.2(a)). 
* See the attached detailed Office action for a list of the certified copies not received. 



Attachment(s) 

1) El Notice of References Cited (PTO-892) 

2) Notice of Draftsperson's Patent Drawing Review (PTO-948) 

3) £3 Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08) 

Paper No(s)/Mail Date 2J5. 



4) n Interview Summary (PTO-41 3) 

Paper No(s)/Mail Date. . 

5) Notice of Informal Patent Application (PTO-152) 

6) □ Other: . 



U.S. Patent and Trademark Office 

PTOL-326 (Rev. 1-04) 



Office Action Summary 



Part of Paper No./Mail Date 7 



Application/Control Number: 09/998,152 
Art Unit: 2177 



Page 2 



DETAILED ACTION 



1. 



Claims 1-32 are pending. 



2. 



Information Disclosure Statements (paper # 2 and paper# 6 have been 



considered. 



Specification 



3. The title of the invention is not descriptive. A new title is required that is clearly 
indicative of the invention to which the claims are directed. 



4. The following is a quotation of the second paragraph of 35 U.S.C. 1 12: 

The specification shall conclude with one or more claims particularly pointing out and distinctly 
claiming the subject matter which the applicant regards as his invention. 

5. Claims 1-32 are rejected under 35 U.S.C. 112, second paragraph, as being 
indefinite for failing to particularly point out and distinctly claim the subject 
matter which applicant regards as the invention. 

Regarding claims 1,32: 

a) The limitation "reviewing" is indefinite. The reviewing step is unclear as to what 
or whom is doing the reviewing of the asset related data on the document. 

b) The limitation "receiving said document into said database in indefinite. It is 
unclear if the database is receiving the whole document or data from the 
document. 

c) the limitation "standard" is indefinite as to what type of standard. 

d) Claim 1 recites the limitation "said record" in line 7. There is insufficient 
antecedent basis for this limitation in the claim. 



Claim Rejections - 35 USC §112 



Application/Control Number: 09/998,152 
Art Unit: 2177 



Page 3 



Regarding claims 2,21,31: 

a) The limitation "providing specific information contained in the asset document 
to a user. It is indefinite as to if the information is retrieved from the asset 
document (electronic or hardcopy) or if this information is retrieved from the 
associated record. 

b) Claim 2 recites the limitation "the associated record" in line 4. There is 
insufficient antecedent basis for this limitation in the claim. 

Regarding claim 5: 

The limitation "extracting" is indefinite because it is unclear if the extraction is 
performed on the asset document or the associated record which contains the asset 
document data. 

Regarding claim 25: 

a) The limitation "retrieving comparison data where the comparison data 
comprises compared common data fields" is indefinite (line 9). This limitation is 
indefinite because the common data is being retrieved however a step of comparing the 
data should precede retrieving the data. 

b) The limitation "asset document ...comprises a record" is indefinite (line 5). It is 
unclear if the record consists of documents or data from the documents. 

c) Claim 25 recites the limitation "the multiple records" in line 16. There is 
insufficient antecedent basis for this limitation in the claim. 



• Application/Control Number: 09/998, 1 52 Page 4 

Art Unit: 2177 

Regarding claim 30: 

The limitation "a means for extracting information" (line 22) is indefinite as to 
what information is being extracted. 

Claim Rejections - 35 USC § 102 

6. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that 
form the basis for the rejections under this section made in this Office action: 

A person shall be entitled to a patent unless - 

(e) the invention was described in (1) an application for patent, published under section 122(b), by 
another filed in the United States before the invention by the applicant for patent or (2) a patent 
granted on an application for patent by another filed in the United States before the invention by the 
applicant for patent, except that an international application filed under the treaty defined in section 
351 (a) shall have the effects for purposes of this subsection of an application filed in the United States 
only if the international application designated the United States and was published under Article 21(2) 
of such treaty in the English language. 

7. Claims 1-2, 4,6-8, 16, 20-32 are rejected under 35 U.S.C. 102(e) as being 
anticipated by McDonald etal (Pub. No.: US 2004/0019558). 

As per claims 1,32 McDonald anticipates: 
reviewing asset-related data contained on at least one document at paragraphs 
127,130,138; 

receiving said document into said database on a flow basis at paragraph 130; 
analyzing contents of said document to ensure compliance with at least one standard at 
paragraph 124; 



Application/Control Number: 09/998,152 Page 5 

Art Unit: 2177 

and providing output data from said record in said database at paragraph137. 

McDonald teaches reviewing asset-related data contained on at least one 
document, receiving said document into said database on a flow basis, analyzing 
contents of said document to ensure compliance with at least one standard and 
providing output data from said record in said database at paragraphs 124,127,130,137- 
138. 

As per claims 2,21 McDonald anticipates: 
associating an asset with a record in a database at paragraph 32; 
inventorying an asset document into the associated record in the database on a flow 
basis at paragraph 130; 

analyzing contents of the asset document to ensure compliance with at least one 
standard at paragraph 124; 

providing specific information contained in the asset document to a user on demand at 
paragraph 137; 

and generating common information from a plurality of the records at paragraph 334. 

McDonald teaches associating an asset with a record in a database, inventorying 
an asset document into the associated record in the database on a flow basis, analyzing 
contents of the asset document to ensure compliance with at least one standard, 
providing specific information contained in the asset document to a user on demand and 
generating common information from a plurality of the records at paragraphs 32, 
124,130,135,137. 

As per claim 4 same as claim arguments above and McDonald anticipates: 



■Application/Control Number: 09/998,152 Page 6 

Art Unit: 2177 

retrieving data stored in the associated record and comparing the contents of the asset 
document to the retrieved data paragraph 77. 

As per claims 6,16,24 same as claim arguments above and McDonald 
anticipates: determining the common information required from a plurality of the asset 
documents, initiating a query in the database whereby the query collects all records 
containing the common information thereby creating a plurality of asset records, 
aggregating the common information contained in the plurality of records, displaying the 
aggregated common information and extracting the aggregated common information at 
paragraph 32. 

As per claim 7 same as claim arguments above and McDonald anticipates: 
wherein the standard comprises a banking standard for securitizing a financial 
instrument at paragraph 124. 

As per claim 8, 22 same as claim arguments above and McDonald anticipates: 
wherein the asset comprises a commercial mortgage loan at paragraph 31. 

As per claim 20 same as claim arguments above and McDonald anticipates: 
wherein the database includes a relational database at paragraph 30. 

As per claim 23 same as claim arguments above and McDonald teaches: 
wherein the standard comprises applicable standards for loan securitization at 
paragraph 124. 



• Application/Control Number: 09/998, 1 52 Page 7 

Art Unit: 2177 

As per claim 25 McDonald anticipates: 
a data input device for receiving first information from an asset document associated 
with an asset from an input source where a plurality of the asset documents associated 
with the asset comprise a record at paragraph 130, fig. 4D; 
a storage device for storing the record at paragraph 30; 

a processor for retrieving comparison data where the comparison data comprises 
compared common data fields of the stored first information from a plurality of the asset 
documents within the record and providing the comparison data to a user paragraph 32 
and fig. 8E and 8F; 

retrieving second information where the second information comprises the asset 
documents common data fields within the record and providing the second information 
to a user at paragraph 32; 

retrieving third information where the third information comprises data from fields 
common to the multiple records and providing the third information to a user at 
paragraph 32; 

identifying missing data for the asset and providing a missing data output to notify a 
user paragraph 228,230; 

and a data output device for generating first output information from the processor 
228,230. 

McDonald teaches a data input device for receiving first information from an 
asset document associated with an asset from an input source where a plurality of the 
asset documents associated with the asset comprise a record, a storage device for 



Application/Control Number: 09/998,152 Page 8 

Art Unit: 2177 

storing the record, a processor for retrieving comparison data where the comparison 
data comprises compared common data fields of the stored first information from a 
plurality of the asset documents within the record and providing the comparison data to 
a user .retrieving second information where the second information comprises the asset 
documents common data fields within the record and providing the second information 
to a user, retrieving third information where the third information comprises data from 
fields common to the multiple records and providing the third information to a user, 
identifying missing data for the asset and providing a missing data output to notify a 
user paragraph, and a data output device for generating first output information from the 
processor at paragraphs 32,130,228,230, at paragraph 130, fig. 4D,8E,8F. 

As per claim 26 same as claim arguments above and McDonald teaches: 
wherein the storage device includes a relational database at paragraph 30 (note: 
Microsoft Access). 

As per claim 27 same as claim arguments above and McDonald teaches: 
wherein the first information is electronically transferred to the computer system at 
paragraph 28, fig. 1. 

As per claim 28 same as claim arguments above and McDonald teaches: 
wherein the first information is transferred to the computer system over a 
telecommunications system at paragraph 28, fig. 1. 



• Application/Control Number: 09/998,152 Page 9 

Art Unit: 2177 

As per claim 29 same as claim arguments above and McDonald anticipates: 
wherein the processor aggregates information from a plurality of the assets thereby 
creating an asset aggregation output for use in securitizing the assets into a financial 
instrument at paragraph 338. 

As per claim 30 McDonald anticipates: 
a means for inputting information regarding a plurality of commercial mortgage loans at 
paragraph 130, fig. 4D; 

a means for storing the information regarding the commercial mortgage loans at 
paragraph 30; 

a first query means for collecting information from at least one commercial mortgage 
loan at paragraph 130; 

a first query result presentation means for presenting the collected information 
paragraph 338 and fig. 8e; 

a second query means for determining if any data is missing from the commercial 
mortgage loan paragraph 190; 

a second query result presentation means for presenting a missing data alert at 
paragraph 230; 

a means for aggregating the information of the commercial mortgage loans wherein the 
means for aggregating has an asset analysis means for determining if the commercial 
mortgage loan is prepared for securitization atfig.8e,8f (Calculation results and 
Qualification information); 



•Application/Control Number: 09/998,152 Page 10 

Art Unit: 2177 

a means for displaying aggregated information at fig. 8e-8f; 

a means for alerting a user if any aggregated information necessary for securitization is 
missing at paragraph 230; 

and a means for extracting information at figs. 8e-8F (Calculation results and 
Qualification information). 

McDonald teaches a means for inputting information regarding a plurality of 
commercial mortgage loans, a means for storing the information regarding the 
commercial mortgage loans, a first query means for collecting information from at least 
one commercial mortgage loan, a first query result presentation means for presenting 
the collected information paragraph, a second query means for determining if any data 
is missing from the commercial mortgage loan, a second query result presentation 
means for presenting a missing data alert, a means for aggregating the information of 
the commercial mortgage loans wherein the means for aggregating has an asset 
analysis means for determining if the commercial mortgage loan is prepared for 
securitization, a means for displaying aggregated information; a means for alerting a 
user if any aggregated information necessary for securitization is missing, and a means 
for extracting information at paragraph 30,130, 190,230,338 and fig. 8e-8f, 4D. 

As per claim 31 McDonald anticipates: 
inventorying an asset document into the associated record in the database in near real 
time as the asset document becomes available to the loan originator paragraph 130, fig. 
4D; 



Application/Control Number: 09/998,152 Page 11 

Art Unit: 2177 

analyzing contents of the asset document to ensure compliance with customary 
standards for loan securitization paragraph 124; 

providing specific information contained in the asset document to a user at figs. 8E, 8F; 
and generating common information from a plurality of the records where the common 
information is generated for the purpose of secrutizing the asset into a trust and 
providing common information to potential investors in the trust at paragraph 32. 

McDonald teaches inventorying an asset document into the associated record in 
the database in near real time as the asset document becomes available to the loan 
originator analyzing contents of the asset document to ensure compliance with 
customary standards for loan securitization, providing specific information contained in 
the asset document to a user, and generating common information from a plurality of 
the records where the common information is generated for the purpose of secrutizing 
the asset into a trust and providing common information to potential investors in the 
trust at paragraphs 32, 124, 130, figs. 4D, at figs. 8E, 8F. 



Claim Rejections - 35 USC § 103 

8. The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all 

obviousness rejections set forth in this Office action: 

(a) A patent may not be obtained though the invention is not identically disclosed or described as set 
forth in section 102 of this title, if the differences between the subject matter sought to be patented and 
the prior art are such that the subject matter as a whole would have been obvious at the time the 
invention was made to a person having ordinary skill in the art to which said subject matter pertains. 
Patentability shall not be negatived by the manner in which the invention was made. 



Application/Control Number: 09/998,152 Page 12 

Art Unit: 2177 

9. Claims 3, 9-11 are rejected under 35 U.S.C. 103(a) as being unpatentable 
over McDonald et al (Pub. No.: US 2004/0019558) in view of Johnson et al. (US 
5,813,009). 

As per claim 3 same as claim arguments above McDonald teaches: 
determining a necessary asset document for origination or updating of the record at 
paragraph 107; 

entering information contained in the necessary asset document into the record of the 
database on a flow basis at paragraph 105; 

and reviewing the record and the electronic facsimile to ensure compliance with at least 
one standard at paragraph 124. 

McDonald does not explicitly teach scanning the necessary asset document for 
the purpose of creating an electronic facsimile of the necessary asset document 
however Johnson does teach this limitation at abstract. It would have been obvious to 
one of ordinary skill in the art at the time of the invention to combine the cited 
references to eliminate paper record keeping (abstract). 

As per claim 9 same as claim arguments above and Johnson teaches: 
wherein the inventorying step further comprises generating an identification marker and 
affixing the identification marker to the necessary asset document at abstract. 

As per claim 10 same as claim arguments above and McDonald teaches: 
wherein the standard comprises a legal standard for document quality at paragraph 
124. 



Application/Control Number: 09/998,152 Page 13 

Art Unit: 2177 

As per claim 11 same as claim arguments above and McDonald teaches: 
wherein the inventorying step further comprises initiating a query to determine missing 
data for the associated record at paragraph 239. 



Claims 5 is rejected under 35 U.S.C. 103(a) as being unpatentable over 
McDonald et al (Pub. No.: US 2004/0019558) in view of Fraser et al. (US 5,995,947). 

As per claim 5, same as claim arguments above and McDonald does not 
explicitly teach requesting specific information contained in the asset document, locating 
a record associated with the asset document, retrieving the record, and extracting the 
specific information contained in the asset document however Fraser does teach this at 
col. 10, lines 47-55. Thus it would have been obvious to one of ordinary skill in the art at 
the time of the invention to combine the cited references to automate loan applications 
(col. 1, lines 66-67). 

Claims 12-14 is rejected under 35 U.S.C. 103(a) as being unpatentable over 
McDonald et al (Pub. No.: US 2004/0019558) in view of Fraser et al. (US 5,995,947) 
and further in view of Broadbent et al (Pub. No. US 2001/0047326). 

As per claims 12-13 same as claim arguments above and Fraser does not 
explicitly teach publishing the required information on a website and writing to a 
computer readable medium however Broadbent does teach these limitations at 



• Application/Control Number: 09/998,152 Page 14 

Art Unit: 2177 

paragraph 280, 286. It would have been obvious to one of ordinary skill in the art at the 
time of the invention to combine the cited references to communicate with the user. 

As per claim 14 same as claim arguments above and Fraser does not explicitly 
teach sending an e-mail message containing the required information however 
Broadbent does teach these limitations at paragraph 280, 286. It would have been 
obvious to one of ordinary skill in the art at the time of the invention to combine the cited 
references to communicate with the user. 

Claims 15 is rejected under 35 U.S.C. 103(a) as being unpatentable over 
McDonald et al (Pub. No.: US 2004/0019558) in view of Fraser et al. (US 5,995,947) 
and further in view of Johnson et al. (US 5,813,009). 

As per claim 15 same as claim arguments above and Fraser does not explicitly 
teach generating a copy of the electronic facsimile of the asset document containing the 
specific information however Johnson does teach this limitation at abstract. It would 
have been obvious to one of ordinary skill in the art at the time of the invention to 
combine the cited references to eliminate paper record keeping (abstract). 

Claims 17-19 are rejected under 35 U.S.C. 103(a) as being unpatentable 
over McDonald et al (Pub. No.: US 2004/0019558) in view of Broadbent et al (Pub. 
No. US 2001/0047326. 

As per claims 17-18 same as claim arguments above and McDonald does not 
explicitly teach publishing the common information on a website. Broadbent does teach 
these limitations at paragraph 280, 286. It would have been obvious to one of ordinary 



- Application/Control Number: 09/998,152 Page 15 

Art Unit: 2177 

skill in the art at the time of the invention to combine the cited references to 
communicate with the user. 

As per claim 19 same as claim arguments above and McDonald does not 
explicitly teach sending an e-mail message containing the common information. 
Broadbent does teach these limitations at paragraph 280, 286. It would have been 
obvious to one of ordinary skill in the art at the time of the invention to combine the cited 
references to communicate with the user. 

Conclusion 

Any inquiry concerning this communication or earlier communications from the 
examiner should be directed to Susan Rayyan whose telephone number is (703) 305- 
031 1. The examiner can normally be reached M-F: 8am - 4:30pm. 

If attempts to reach the examiner by telephone are unsuccessful, the examiner's 
supervisor, John Breene can be reached on 703-305-9790. The fax phone numbers for 
the organization where this application or proceeding is assigned are (703) 872-9306 for 
Official communications, (703) 746-7238 for After Final communications and (703) 746- 
7240 for Status inquires and draft communications. 

Any inquiry of a general nature or relating to the status of this application or 
proceeding should be directed to the receptionist whose telephone number is (703) 305- 
3900. 

Susan Rayvan 
March 19, 2003 

PRJMARY EXAMSWGR