Skip to main content

Full text of "USPTO Patents Application 09998152"

See other formats


Atty. Docket No. 010520 
Serial No. 09/998,152 

Remarks 

Applicant's undersigned representative thanks the Examiner for the courtesy of 
a telephone interview to discuss the rejections set forth in the Office Action. The present 
amendments and remarks are provided in accordance with the discussions conducted during 
the telephone interview. 

Claims 1-32 are currently pending in the subject application. Based on at least 
the following remarks, reconsideration and allowance are respectfully requested for claims 
pending in the present application: 

Claim Rejections under 35 U.S.C. § 112 

Claims 1-32 stand rejected as being indefinite for failing to particularly point 
out and distinctly claim the subject matter which applicant regards as his invention. In view 
of the following remarks, applicant submits that the limitations in question are sufficiently 
definite and have adequate support in the specification as submitted. 

For purposes of various arguments presented herein, applicant invites attention 
to MPEP § 2173.02, which reads, in pertinent part that "[djefiniteness of claim language must 
be analyzed, not in a vacuum, but in light of: (A) The content of the particular application 
disclosure[]." 

Claims 1 and 32 were rejected due to the "reviewing" step being indefinite. 
Applicant respectfully directs the Examiner to paragraph 63 of the present application, in 
which, "[a]s a preparatory step, the user determines in step 95 if this is a preexisting asset 
matching record. . . ." As is demonstrated fi-om the foregoing example, a user may review an 
asset document to determine if there is a corresponding record in a database. It is not 
necessary that the term "reviewing" be set forth explicitly in the specification. See Cordis 

13 



Atty. Docket No. 010520 
Serial No. 09/998,152 

Corp. V. Medtronic AVE Inc., 67 USPQ2d 1876 (Fed. Cir. 2003) (the patent specification 
must describe an invention in sufficient detail that one skilled in the art can clearly conclude 
that the inventor invented what is claimed; however, the disclosure as originally filed does not 
have to provide in haec verba support, or a verbatim recitation of the claim limitations, for the 
claimed subject matter at issue). 

Claims 1 and 32 were further rejected due to the "receiving" limitation being 
indefinite. Specifically, the Examiner stated that, "it is unclear if the database is receiving the 
whole document or data from the document." Applicant points out, for example, that the 
"user [] inputs asset data in step 101 into the record." It is clear that the database is receiving 
data fi-om the document. 

In addition. Applicant notes that the "reviewing" and "receiving" terms, among 
other claim terms, are included within the "Summary of the Invention" section of the 
application. (See Specification, paragraphs 9-14). 

Claims 1 and 32 were further rejected due to the limitation "standard" being 
indefinite. Applicant respectfully directs the Examiner's attention to paragraph 58 which 
discloses "a preprogrammed standard, a banking standard or legal standard. . . ." By way of 
example, dependent Claims 7 and 10 illustrate two standards that may be applied to 
embodiments of the present invention. 

Claims 1 was further rejected due to the "said record" limitation in line 9 
lacking antecedent basis. Applicant respectfully directs the Examiner's attention to the 
preamble of Claim 1 which recites "at least one record therein. . ." ("If the claim preamble, 
when read in the context of the entire claim, recites limitations of the claim, or, if the claim 



14 



Atty. Docket No. 010520 
Serial No. 09/998,152 

preamble is necessary to give life, meaning and vitality to the claim, then the claim preamble 
should be construed as if in the balance of the claim." See MPEP § 2 111 .02). 

Claims 2, 21, and 31 were rejected due to the limitation "providing specific 
information contained in the asset document to a user." Claims 2, 21, and 3 1 have been 
amended to reflect "providing specific information contained in the record to a user". In 
particular, "asset document" has been replaced with a "record" element. 

Claim 2 was rejected due to the limitation "the associated record" in line 4 
lacking antecedent basis. Applicant respectfully directs the Examiner's attention to line 3 of 
Claim 2, which recites, "associating an asset with a record in a database." From the context 
of Claim 2, therefore, it is clear that the "associated record" limitation is the record whose 
antecedent basis is established in line 3 of Claim 2. 

The Examiner rejected Claim 5 due to the "extracting" limitation being 
indefinite based upon where the information is being extracted. In particular, the Examiner 
stated that, "it is unclear if the extraction is performed on the asset document or the associated 
record which contains the asset document data." This is a distinction without a difference. 
The record contains information from the asset document. To align Claim 5 with the changes 
made in Claim 2 above, however, and in the interest of expediting prosecution of the present 
application, "asset document" has been deleted from line 6 and replaced with a "record" 
element. 

The Examiner rejected Claim 25 based upon the order of retrieving comparison 
data and generating comparison data. Claim 25 has been amended to reflect that generating 
comparison data comes before retrieving comparison data. Claim 25 was further rejected by 
the Examiner due to it being unclear, "if the record consists of documents or data from the 

15 



Atty. Docket No. 010520 
Serial No. 09/998,152 

documents." Claim 25 has been amended to add "information from" before "a plurality of the 
asset documents" in lines 5-6. Finally, Claim 25 was rejected due to insufficient antecedent 
basis for the limitation "the multiple records" in line 19. Claim 25 has been amended to 
delete the instance of "the" preceding the "multiple records" element. 

The Examiner rejected Claim 30 asserting that the limitation "means for 
extracting information" is indefinite as to what information is extracted. Claim 30 has been 
amended to add "aggregated" before "information" in line 19 of Claim 30. 

Claim Rejections under 35 U.S.C. §102 
Claims 1-2, 4, 6-8, 16, 20-32 stand rejected under this section in view of 
McDonald et al. (U.S. Pat. Appln. No. 2004/0019558). hi the context of the following 
remarks, applicant notes that, "for anticipation under 35 U.S.C. 102, the reference must teach 
every aspect of the claimed invention either explicitly or impliedly." (See MPEP §706.02 - 
Rejection on Prior Art). 

McDonald generally relates to a method and apparatus for collecting 
information necessary for originating a mortgage loan. McDonald specifically provides, "a 
mortgage loan and financial services data processing system. . .to originate a real estate loan 
or mortgage transaction for potential homebuyers or homeowners." (See McDonald 
"Summary of the Invention" - emphasis added). It is clear that McDonald relates to tracking 
information for a single loan for use in originating the loan. For example, McDonald calls for 
entry of property information for a single loan including "sales price of home" (emphasis 
added) meaning that a single asset (i.e., a single home) is associated with origination of the 
loan for the single asset. (See McDonald - box 220 of Fig. 3 of Sheet 7 of 47). Thus, not only 



16 



Atty. Docket No. 010520 
Serial No. 09/998,152 



is McDonald focused merely on loan origination , it is also focused only on processing data 
associated with a single asset for each loan origination. 

In contrast to McDonald, various claims of the present application recite, 
among other elements, a "securitization" limitation that contemplates processing data 
associated with "multiple assets" or multiple loans. The specification of the present 
application offers methods and systems that provide, "rigorous collection of loan 
documentation ... for securitization." (See paragraph 82). These methods and systems of the 
present application, "validate information taken from a plurality of asset documents . . . 
thereby reducing or eliminating costly due diligence prior to securitization." (See 
Specification, paragraph 83). 

It is important to understand the complexity of the task of preparing 

documentation for a securitization, which is the typical operational environment in which the 

claimed invention is practiced. The securitization process is described in the "Description of 

the Invention Background" section of the present application (See, e.g., paragraphs 3, 4 and 6 

of the Specification, which have been reproduced here for convenient reference): 

In the course of a securitization, the lender or originator typically 
transfers the loan into a legal entity known as a Special Purpose 
Vehicle (SPV) or a tmst. The SPV structure provides the investor 
with protection if the originator becomes bankrupt and makes it 
easier for the originator to classify the transfer of loans or assets 
as a sale. The SPV issues securities whose principal and interest 
are paid by cash flows generated by the loans. The SPV passes 
the consideration paid by the investors to the originator. The 
securities issued by the SPV are subject to securities laws and 
regulatory authorities such as the Securities £ind Exchange 
Commission. As such, it is necessary for the lender who 
originates the loans to abide by laws, regulations and customs 
regarding full disclosure of information for use by purchasers of 
the securities. 



17 



Atty. Docket No. 010520 
Serial No. 09/998,152 

At the time of the sale of the assets to the trust or SPV, the lender 
must make representations and warranties that usually include a 
statement to the effect that there are no material errors in the data 
and/or documents provided by the lender to purchasers for the 
purpose of evaluating assets. If a material error is found in the 
data, the lender may need to repurchase the loan from the trust. 
This could potentially cause significant losses to the lender and 
potentially damage the lender's reputation for reliability in the 
securities markets. Furthermore, these representations and 
warranties may cover significant characteristics of the portfolio of 
loans and exceptions to underwriting policies. The support for 
making many representation and warranty statements lies 
originally in the loan documents and is aggregated in data files by 
the lender and then delivered to investors for use in portfolio 
analysis. A lender who is unable or unwilling to aggregate the 
data contained in the documents can cause an investor to perform 
labor intensive due diligence on every asset in the portfolio. Such 
investor due diligence requirements may cause the potential 
investor to discount assets. Other complications can include 
assets that are unprofitable for the lender to sell or which simply 
cannot be sold due to unknown risks. 



In one example, a securitization may contain as many as several 
hundred loans, each with several hundred documents. A data file 
is provided to all prospective investors and contains many 
individual data points that must be tied to a specific document in 
the loan file. Prospectus material, loan sale agreements, and 
economic valuation models are based on this data. Because loans 
are usually made over a long period of time and may come from a 
number of lenders, a great challenge is presented by collecting, 
validating, standardizing, and distributing data to meet the 
standards required by the securities market. 

Claim 1 of the present application recites the "securitization" limitation 
coupled with the "multiple assets" limitation: "wherein said output data includes at least asset 
data related to multiple assets associated with a securitization." (See Claim 1 - emphasis 
added). Claim 30 of the present application recites, "a plurality of commercial mortgage 
loans . . ." and "an asset analysis means for determining if the commercial mortgage loan is 



18 



Atty. Docket No. 010520 
Serial No. 09/998,152 

prepared for securitization." (See Claim 30 - emphasis added). Also, Claim 3 1 of the present 
application recites, "generating common information from a plurality of the [asset document] 
records where the common information is generated for the purpose of securitizing the asset 
into a trust and providing common information to potential investors in the trust." (See Claim 
3 1 - emphasis added). Therefore, for at least the reason of its failure to teach, suggest or 
disclose the "multiple asset" or "securitization" limitations of the present claims, McDonald 
does not anticipate the claims of the present application. 

In addition, McDonald does not discuss anything akin to a "flow basis" timing 
of information entry as recited in the claims of the present application. The Examiner relies 
upon McDonald paragraphs 124, 127, 130, 137 and 138 to support the proposition that 
McDonald discloses timing of information entry. For example, paragraph 130 of McDonald 
merely discusses the transfer of information from the originator's software system and that, 
"the originator will manually input any other required information not already provided by the 
originator's software system," but timing of data input is not addressed. Applicant 
respectfiilly asserts that none of these paragraphs in McDonald recite timing requirements for 
information entry related to a mortgage or loan involved in a securitization. In contrast to 
McDonald, Claims 1, 2, 21, 25, and 30-32 of the present application recite, among other 
elements, a "flow basis" limitation related to the timing of information or data receipt, entry 
and/or inventorying. Therefore, applicant submits that McDonald does not teach, disclose or 
suggest the "flow basis" limitation as recited in various claims of the present application. 

The specification of the present application provides for collection or 
validation of information, "as the loan documents become available to those concerned with 
loan origination, maintenance, and securitization, thereby reducing or eliminating costly due 



19 



Atty. Docket No. 010520 
Serial No. 09/998,152 

diligence prior to securitization." (See Specification, paragraph 83). In accordance with this 
teaching, Claim 1 of the present application recites, "receiving said document into said 
database on a flow basis including receiving information from said document into said 
database as said document information becomes available for entry into said database." (See 
Claim 1 - emphasis added). Li contrast, McDonald does not teach, disclose or suggest a "flow 
basis" limitation in association with the timing of its data entry. 

Dependent Claims 4, 6-8, 16 and 20 depend either directly or indirectly from 
independent Claim 2. As McDonald does not anticipate Claim 2 for at least the reasons set 
forth above, McDonald fails to disclose all limitations of Claims 4, 6-8, 16 and 20 as "a 
dependent claim includes all the limitations of the claim fi-om which it depends." Wahpeton 
Canvas Co., Inc. v. Frontier, Inc., 10 USPQ2d 1201, 1208 (Fed. Cir. 1989). hi addition, 
McDonald does not teach "flow basis" and does not anticipate Claim 21 for the reasons set 
forth above. Claims 22-24 depend either directly or indirectly from Claim 2 1 and are 
therefore also not anticipated by McDonald for the same reasons as Claim 21 . See Wahpeton 
Canvas. 

Claim 25 recites the "flow basis" limitation. For at least the reasons set forth 
above, McDonald does not anticipate Claim 25. Claims 26-29 depend either directly or 
indirectly from Claim 25. As McDonald does not anticipate Claim 25, it also does not 
anticipate claims that depend from Claim 25. 

Claim 30, as amended, now recites the "flow basis" limitation. For at least the 
reasons set forth above, McDonald does not anticipate Claim 30. 

In rejecting Claim 31, the Examiner relies upon McDonald paragraph 130 and 
FIG. 4D. There is no discussion in McDonald paragraph 130 nor in FIG. 4D regarding the 

20 



Atty. Docket No. 010520 
Serial No. 09/998,152 

timing of the data entry, much less a "flow basis" limitation as recited in Claim 31. As such, 
McDonald fails to anticipate every limitation of Claim 3 1 . 



Claim Rejections under 35 U.S.C. §103 - McDonald 
Claims 3, 5, 9-1 1, 12-14, 15, 17-19 were rejected as being obvious in view of 
McDonald taken in view of certain other references. One of the elements of a prima facie 
case of obviousness under 35 U.S.C. § 103(a) is that the cited reference, or references when 
combined, must teach or suggest all of the claim limitations. See MPEP § 2142. 

For purposes of various arguments presented herein, applicant invites attention 
to MPEP §2142, which reads, in pertinent part, as follows: 

To establish a prima facie case of obviousness, three basic criteria must 
be met. First, there must be some suggestion or motivation, either in the 
references themselves or in the knowledge generally available to one of 
ordinary skill in the art, to modify the reference or to combine reference 
teachings. Second, there must be a reasonable expectation of success. 
Finally, the prior art reference (or references when combined) must 
teach or suggest all the claim limitations. The teaching or suggestion to 
make the claimed combination and the reasonable expectation of 
success must both be found in the prior art, and not based on 
applicant's disclosure. In re Vaeck, 947 F.2d 488, 20 USPQ2d 1438 
(Fed. Cir. 1991). 

Applicant further invites attention to MPEP §2143.03, which is entitled "All Claim 
Limitations Must Be Taught or Suggested" and which reads, in pertinent part, as follows: 

To establish prima facie obviousness of a claimed invention, all 
the claim limitations must be taught or suggested by the prior 
art. In re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1974). 
"All words in a claim must be considered in judging the 
patentability of that claim against the prior art." In re Wilson, 
424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). If an 
independent claim is nonobvious under 35 U.S.C. §103, then 
any claim depending therefrom is nonobvious. In re Fine, 837 
F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988). 

21 



Atty. Docket No. 010520 
Serial No. 09/998,152 

At least for the reasons provided above, McDonald alone or in combination 
with the references cited, does not teach, disclose or suggest all of the elements of the claims 
of the present application. As amended, Claim 2 recites that the asset information is 
inventoried into a database on a "flow basis." As such, any combination of references cited 
against the claims the Examiner rejects under § 103 must teach or suggest such feature, which 
is not the case here. 

Each of Claims 3, 5, 9-1 1, 12-14, 15, and 17-19 depend from (either directly or 
indirectly) and further limit independent Claim 2. Because independent Claim 2 is allowable 
for at least the reasons set forth herein, it follows that each of the dependent claims is also 
allowable. See MPEP §2143.03 (citing In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 
1988) ("If an independent claim is nonobvious under 35 U.S.C. §103, then any claim 
depending therefrom is nonobvious.") 

Based upon at least the foregoing reasons, McDonald as applied alone or in 
combination with any other reference, fails to teach all elements of the present claims. 
Applicant submits that a prima facie case of obviousness has not been established and that the 
claims are in condition for allowance. 



22 



Atty. Docket No. 010520 
Serial No. 09/998,152 



Summary 

Applicant respectfully requests withdrawal of the rejections set forth in the 



Office Action and allowance of the present application. The Examiner is invited to contact 
the undersigned representative by telephone to discuss any outstanding issues with the 
present application. 



KIRKPATRICK & LOCKHART LLP 

Henry W. Oliver Building 

535 Smithfield Street 

Pittsburgh, Pennsylvania 15222-2312 

Telephone: (412) 355-8994 
Fax: (412) 355-6501 

E-Mail: mlazzara@kl.com 

Customer No. 26285 



Respectfully submitted, 




Reg. No. 41,142 
Attorney for Applicant 



23