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

Remarks 

Applicant and the undersigned representative extend their gratitude to 
Examiner Robinson for the courtesy of a telephone interview conducted on January 5, 2006, 
with regard to the captioned application. The present response takes into account various 
topics discussed with the Examiner during the telephone interview. 

Upon entry of the present amendments, Claims 1-7, 9-33, and 35-37 are 
pending in the application. Claims 8 and 34 have been cancelled, without prejudice or 
disclaimer of the subject matter claimed therein. Based on at least the following remarks, 
reconsideration and allowance are respectfully requested for the pending claims: 

Claim Rejections under McDonald 

Claims 1-2, 4, 6-8, 16, 20-32 and 37 stand rejected under 35 U.S.C. § 102(e) in 
view of McDonald et al. (U.S. Pat. Appln. No. 2004/0019558). In 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). 

In contrast to McDonald, the independent claims of the present application 
recite, among other elements, a "securitization" limitation that contemplates processing data 
and information associated with "multiple assets" pursuant to securitization of the multiple 
assets, wherein at least one of the multiple assets comprises a commercial mortgage loan. As 
those skilled in the art can appreciate, to "securitize" (i.e., the verb form of the noun form 
"securitization") means "to consolidate (as mortgage loans) and sell to other investors for 
resale to the public in the form of securities." (see Merriam-Webster Online Dictionary - 
www.m-w.com) . 



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

The securitization process is generally described in the "Description of the 
Invention Background" section of the present application (See, e.g., para. 6 of the 
Specification): 

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. 

In contrast to the subject matter of the pending claims, 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, residential loan 
for use in originating the loan, not for securitization of multiple assets, wherein at least one of 
the multiple assets comprises a commercial mortgage 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 residential 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 is McDonald focused merely on loan origination, it is also focused only 
on processing data associated with a single asset for each loan origination, but not on 
preparing multiple assets including at least one commercial mortgage loan for securitization. 



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

Claim 1 of the present application recites, among other elements, "reviewing 
asset-related data contained on at least one document pursuant to securitization of multiple 
assets, wherein at least one of the multiple assets comprises a commercial mortgage loan" 
(See Claim 1, emphasis added). Likewise, independent Claims 2, 21, 25, 30-33, 36 and 37 
have been amended to include and emphasize aspects of the invention performed, "pursuant 
to securitization of multiple assets, wherein at least one of the multiple assets comprises a 
commercial mortgage loan" and other like aspects. Therefore, for at least the reason of its 
failure to teach, suggest or disclose the "multiple asset" or "securitization" limitations, 
particularly with regard to commercial mortgage loans, applicant submits that McDonald does 
not anticipate the claims of the present application. 

In the office action, the Examiner suggests that paragraph 316 of McDonald 
teaches "securitization" by the act of "gathering information and disclosing information to the 
buyer or borrower, and providing proper documentation to the lender or investor" (See Office 
Action, para. 12). Applicant respectfully disagrees with this interpretation of McDonald. As 
demonstrated above, while such acts may be performed in connection with securitization, the 
acts in and of themselves are clearly not within the meaning of "securitization of multiple 
assets" as understood by those skilled in the art. 

Also, the Examiner points to paragraph 138 of McDonald as allegedly teaching 
"multiple assets associated with a securitization." (See Office Action, para. 12). In fact, 
McDonald discloses the following: "Box 376 shows the originator collects all applicable 
documentation on the stacking order checklist from the Borrower, including (but not limited 
to) W-2 forms, paystubs, bank statements, tax returns, bankruptcy papers, retirement 
information, etc." (See McDonald, para. 138). Applicant submits that the items of 



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

"documentation" listed in this paragraph do not constitute "assets" for purposes of the present 
claims; and even if such items were somehow deemed "assets" they could not be securitized 
in any manner in accordance with the definition of "securitization" as contemplated by the 
claims of the present application. 

The Examiner further cites paragraphs 130 and 315 of McDonald as supporting 
the contention that McDonald teaches or suggests "flow basis" as that term is applied to the 
claims of the present application. Applicant submits, however, that these paragraphs are 
silent as to "flow basis," and that McDonald does not teach or suggest processing information 
or data as it becomes available or on a "flow basis" in accordance with aspects of the present 
invention. Even though McDonald may discuss automatic data transfer, for example, it is not 
apparent from reading McDonald how much data is actually entered at a given time, with 
what frequency data entered, or with what timing the data is entered. For example, there is no 
indication of whether or not a McDonald system collects and retains data in a queue prior to 
its entry into the system. 

In contrast to this ambiguity in McDonald, the present claims clearly provide 
for "flow basis" processing of data and information, including conditioning documents on a 
document-by-document basis that provides for collection of data and other information 
independent of its ultimate end use. The specification of the present application describes 
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 diligence prior to securitization." (See Specification, para. 83). The 
term "flow basis" also means that data or information "can be collected independently of its 
end use." (See Specification, para. 46). 



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

For example, 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, wherein flow basis includes collecting data 
from said document independently of an end use of said document." (See Claim 1 - emphasis 
added). In contrast, McDonald does not teach, disclose or suggest a "flow basis" limitation in 
association with the timing of its data entry. 

Dependent Claims 4, 6-7, 1 6 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, 6-7, 16 and 20 as "a 
dependent claim includes all the limitations of the claim from which it depends." Wahpeton 
Canvas Co., Inc. v. Frontier, Inc., 10 USPQ2d 1201, 1208 (Fed. Cir. 1989). 

For at least the reasons set forth above for Claim 1 , McDonald does not 
anticipate Claim 21. Claims 22-24 depend either directly or indirectly from Claim 21 and are 
therefore also not anticipated by McDonald for the same reasons as Claim 21 . See Wahpeton 
Canvas. 

Also, for at least the reasons set forth above for Claim 1 , McDonald does not 
anticipate Claim 25 and does not anticipate Claims 30-32. 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. In addition, for at least the same reasons as 
set forth above for Claim 1, McDonald does not anticipate Claim 37. 

In the Office Action, Claims 3, 5, 9-11, 12-15, 17-19 and 33-36 were rejected 
as being obvious in view of McDonald when taken in view of certain combinations with other 



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Serial No. 09/998,152 " 

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). 

At least for the reasons provided above, McDonald alone or in combination 
with the cited references does not teach, disclose or suggest all of the elements of the claims 
of the present application. 



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

Each of Claims 3, 5, 9-11, 12-15 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 above, it follows that each of these 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.") 

For at least the reasons set forth above with regard to Claim 1 , applicant 
submits that Claims 33, 36 and 37 are allowable in view of McDonald, either when taken 
alone or in combination with one or more of the other cited references. Claim 35 depends 
from Claim 33 and is allowable for the same reasons as Claim 33. 

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



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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 NICHOLSON GRAHAM LLP 

Henry W. Oliver Building 

535 Smithfield Street 

Pittsburgh, Pennsylvania 15222-2312 

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

E-Mail: mlazzara@klng.com 

Customer No. 26285 



Respectfully submitted, 




Reg. No. 41,142 
Attorney for Applicant 



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