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United States Patent and Trademark Office 



UNITED STATES DEPARTMENT OF COMMERCE 
United States Patent and Trademark OfTice 
Address: COMMISSIONER FOR PATENTS 
P.O. Box 1 450 

Alexandria, Virginia 223 13- 1 4}0 
www.uspto.gov 



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 01/21/2005 

KIRKPATRICK & LOCKHART NICHOLSON GRAHAM LLP 
535 SMITHFIELD STREET 
PITTSBURGH, PA 15222 



EXAMINER 



RAYYAN, SUSAN F 



ART UNIT 



PAPER NUMBER 



2167 

DATE MAILED: 01/21/2005 



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



PTO-90C (Rev. 10/03) 



Office Action Summary 


Application N . 

09/998,152 


Applicant(s) 

COLEMAN, DONALD P. 


Examiner 

Susan F. Rayyan 


Art Unit 

2167 





- The MAILING DATE of this communication appears n the cover sheet with the corresp ndence 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 lime may be available under the provisions of 37 CFR 1.136(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 fnjm 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 )^ Responsive to communication(s) filed on 27 September 2004 . 
2a)^ This action is FINAL. 2b)D This action is non-final. 

3) 0 Since this application is in condition for allowance except for formal nnatters, 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) K Claim(s) 1-32 is/are pending in the application. 

4a) Of the above claim(s) is/are withdrawn from consideration. 

5) 0 Claim(s) is/are allowed. 

6) 13 Claim(s) 1-32 is/are rejected. 
?)□ Claim(s) is/are objected to. 

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

Application Papers 

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

10)^ The drawing(s) filed on 30 November 2001 is/are: a)K accepted or b)n 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 !)□ 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)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f). 
a)n All b)n Some * c)^ None of: 

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

2. n 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 ) S Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-413) 

2) Q Notice of Draflsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mail Date. . 

3) □ Information Disclosure Statement(s) (PTO-1449 or PTO/SB/08) 5) D Notice of Infomal Patent Application (PTO-152) 

Paper No(s)/Mall Date . 6) □ Other: . 



U.S. Patent and Trademark Office 

PTOL-326 (Rev. 1-04) 



Office Action Summary 



Part of Paper No./Mall Date 20050110 



Application/Control Number: 09/998,152 
Art Unit: 2167 



Page 2 



DETAILED ACTION 

1 . Claims 1-32 are pending. 

2. Information Disclosure Statements (paper # 2 and paper# 6) have been 
considered. 

Claim Rejections - 35 USC § 102 

3. 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. 

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

As per claims 1 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 including receiving 
information from said document into said database as said document information 
becomes available for entry into said database at paragraphs 130,315; 
analyzing contents of said document to ensure compliance with at least one standard at 
paragraph 124; 



Application/Control Number: 09/998,152 Page 3 

Art Unit: 2167 

and providing output data from said record in said database, wherein said output data 
includes at least data related to multiple assets associated with a securitization at 
paragraph 137,316. 

McDonald teaches reviewing asset-related data contained on at least one 
document, 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, analyzing contents of said 
document to ensure compliance with at least one standard, and providing output data 
from said record in said database, wherein said output data includes at least data 
related to multiple assets associated with a securitization at paragraphs 
124,127,130,137-138,315-316. 

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

receiving said asset document into said database on a flow basis including receiving 
information from said asset document into said database as said asset document 
information becomes available for entry into said database at paragraphs 130, 315; 
analyzing contents of said document to ensure compliance with at least one standard at 
paragraph 124; 

and providing output data from said record in said database, wherein said output data 
includes at least data related to multiple assets associated with a securitization at 
paragraph137-138. 



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

Art Unit: 2167 

McDonald teaches reviewing asset-related data contained on at least one asset 
document, receiving said asset document into said database on a flow basis including 
receiving information from said asset document into said database as said asset 
document information becomes available for entry into said database, analyzing 
contents of said document to ensure compliance with at least one standard, and 
providing output data from said record in said database, wherein said output data 
includes at least data related to multiple assets associated with a securitization 
paragraphs 124,127,130,137-138, 315. 

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 including inventorying information from said asset document into the database as 
asset document information becomes available for inventorying at paragraphs 130,315; 
analyzing contents of the asset document to ensure compliance with at least one 
standard at paragraph 124; 

providing specific information contained in the record 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 including 
inventorying information from said asset document into the database as asset document 



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

Art Unit: 2167 

information becxDmes available for inventorying, analyzing contents of the asset 
document to ensure compliance with at least one standard, providing specific 
information contained in the record to a user on demand and generating common 
information from a plurality of the records at paragraphs 32, 124,130,135,137,315,334. 

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



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

Art Unit: 2167 

wherein the standard connprises applicable standards for loan securitization at 
paragraph 124. 

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 on a flow basis including receiving said first 
information as said first information becomes available for entry where information from 
a plurality of the asset documents associated with the asset comprise a record at 
paragraphs 130, 315 and fig. 4D; 
a storage device for storing the record at paragraph 30; 

a processor for generating comparison data wherein the comparison data comprises 
compared data fields of the stored first information from a plurality of the asset 
documents with in the record, retrieving the comparison data 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; 



Application/Control Number: 09/998,152 Page 7 

Art Unit: 2167 

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

IVIcDonald teaches a data input device for receiving first information from an 
asset document associated with an asset from an input source on a flow basis including 
receiving said first information as said first information becomes available for entry 
where information from a plurality of the asset documents associated with the asset 
comprise a record , a storage device for storing the record, a processor for generating 
comparison data wherein the comparison data comprises compared data fields of the 
stored first information from a plurality of the asset documents with in the record, 
retrieving the comparison data 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, and a 
data output device for generating first output information from the processor at 
paragraphs 32,130,228,230, 315 and 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: 



Application/Control Number: 09/998, 1 52 Page 8 

Art Unit: 2167 

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 . 

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 on 
a flow basis including inputting aid commercial loan information as said commercial 
mortgage information becomes available for input at paragraphs 130, 315 and 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 1 30; 

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; 



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

Art Unit: 2167 

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 at paragraph 316 and fig.8e,8f (Calculation 
results and Qualification information); 
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 on a flow basis including inputting aid commercial loan 
information as said commercial mortgage information becomes available for input, 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 , 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 



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

Art Unit: 2167 

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, 
190,230,315-316,- 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; 

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

providing specific information contained in the record 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 32,316. 

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, 316 and figs. 4D, 8E, 8F. 



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

Art Unit: 2167 

Claim Rejections - 35 USC § 103 

5. The following is a quotation of 35 U.S.C. 103(a) which fornns 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. 

6. 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 sanne 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 dpes 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: 



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

Art Unit: 2167 

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 IVIcDonald teaches: 
wherein the standard comprises a legal standard for document quality at paragraph 
124. 

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. 

7. 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 record 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). 



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

Art Unit: 2167 

8. 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 
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. 

9. 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). 



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

Art Unit: 2167 

10. 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 
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. 

Response to Arguments 

1 1 . Applicant's arguments filed September 27, 2004 have been fully considered but 
they are not persuasive. 

12. Applicant's arguments with respect to claim lhave been considered but are moot 
in view of the new ground(s) of rejection. 

Regarding claim 1 , Applicant argues McDonald et al (US 2004/001 9558) does 
not explicitly teach "securitization" however McDonald does teach this at paragraph 316 
(gathering information and disclosing information to the buyer or borrower, and 
providing proper documentation to the lender or investor). 



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

Art Unit: 2167 

Regarding claimi, Applicant argues McDonald does not teach multiple assets 
associated with a securitization however this limitation is taught at paragraph 138. 

1 3. Applicant argues McDonald does not teach a plurality of commercial loan 
mortgages or an asset analysis means for determining if the commercial mortgage is 
prepared for securitization , however Examiner respectfully disagrees. McDonald 
teaches securitization at paragraph 136 and asset analysis at fig.8E, 8F. 

14. Applicant argues McDonald does not teach flow basis, Examiner respectfully 
disagrees. As described in the Specification in paragraph 46, ""Flow basis" indicates 
that information is analyzed and entered Into the database as the information becomes 
available to loan originator or someone responsible for loan maintenance or any other 
user." McDonald teaches this limitation at paragraphs 130 and 315. Information is 
entered automatically or by the originator or Broker/Lender. The originator enters input 
data he has or obtains (as it becomes available to enter). 



Conclusion 

1 5. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time 
policy as set forth in 37 CFR 1 . 1 36(a). 

A shortened statutory period for reply to this final action is set to expire THREE 
MONTHS from the mailing date of this action. In the event a first reply is filed within 
TWO MONTHS of the mailing date of this final action and the advisory action is not 
mailed until after the end of the THREE-MONTH shortened statutory period, then the 
shortened statutory period will expire on the date the advisory action is mailed, and any 



Application/Control Number: 09/998,152 



Page 16 



Art Unit: 2167 

extension fee pursuant to 37 CFR 1 .136(a) will be calculated from the mailing date of 
the advisory action. In no event, however, will the statutory period for reply expire later 
than SIX MONTHS from the mailing date of this final action. 

Any inquiry concerning this communication or earlier communications from the 
examiner should be directed to Susan Rayyan whose telephone number is (571) 272- 
41 17. The examiner can normally be reached M-F: Sam - 4:30pm. 

If attempts to reach the examiner by telephone are unsuccessful, the examiner's 
supervisor, John Breene can be reached on (571) 272-4107 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 Rayyan 




J 




January 14, 2005