.« United States Patent and Trademark Office
m . ■ . . . —
UNITED STATES DEPARTMENT OF COMMERCE
United Slates Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria. Virginia 22313-1450
FIRST NAMED INVENTOR
ATTORNEY DOCKET NO.
Donald P. Coleman
K1RKPATRICK & LOCKHART PRESTON GATES ELLIS LLP
535 SM1THFIELD STREET
PITTSBURGH, PA 15222
ROBINSON. GRETA LEE
SHORTENED STATUTORY PERIOD OF RESPONSE
Please find below and/or attached an Office communication concerning this application or proceeding.
If NO period for reply is specified above, the maximum statutory period will apply and will expire 6 MONTHS
from the mailing date of this communication.
PTOL-90A (Rev. 10/06)
Office Action Summarv
COLEMAN, DONALD P.
Greta L. Robinson
- 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) OR THIRTY (30) DAYS,
WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
- Extensions of time 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 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 repiy 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).
1 )E3 Responsive to communication(s) filed on 1 7 October 2006 .
2a)^ This action is FINAL. 2b)D 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, 1 935 CD. 1 1 , 453 O.G. 213.
Disposition of Claims
4) ^ Claim(s) 2-7.9-31.33 and 35-37 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4a) Of the above claim(s) is/are withdrawn from consideration.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) S Claim(s) 2-7. 9-31. 33 and 35-37 is/are rejected.
7) 0 Claim(s) is/are objected to.
8) Q Claim(s) are subject to restriction and/or election requirement.
9) D The specification is objected to by the Examiner.
10)D The drawing(s) filed on is/are: a)D 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 )□ The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-1 52.
Priority under 35 U.S.C. § 119
12)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 1 19(a)-(d) or (f).
a)D All b)D Some * c)D None of:
1 .□ Certified copies of the priority documents have been received.
2. D Certified copies of the priority documents have been received in Application No. .
3. D 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.
1 ) ^ Notice of References Cited (PTO-892) 4) □ Interview Summary (PTO-413)
2) O Notice of Draftsperson's Patent Drawing Review (PTO-948) Paper No(s)/Mail Date. .
3) □ Information Disclosure Statement(s) (PTO/SB/08) 5) d Notice of Informal Patent Application
Paper No(s)/Mail Date . 6) □ Other: .
U.S. Patent and Trademark Office
PTOL-326 (Rev. 08-06)
Office Action Summary
Part of Paper No./Mail Date 20070105
Application/Control Number: 09/998, 1 52 Page 2
Art Unit: 2168
1 . Applicant's election without traverse of Invention II claims 2-7, 9-31 , 33, 35-37 in
the reply filed on October 17, 2006 is acknowledged. Non-elected claims 1 and 32 have
2. Claims 2-7, 9-31 , 33 and 35-37 are pending in the present application.
Claim Rejections ■ 35 USC §112
3. The following is a quotation of the second paragraph of 35 U.S.C. 112:
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.
4. Claims 2-7, 9-24, 31 , 33, 35 and 36 are rejected under 35 U.S.C. 1 12, second
paragraph, as being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
Regarding independent claims 2, 31 and 33 the following limitation is vague:
"computer-assisted" [note preamble of claim]. The examiner suggests changing
"computer-assisted" to read "computer-implemented" for clarity.
Where applicant acts as his or her own lexicographer to specifically define a term
of a claim contrary to its ordinary meaning, the written description must clearly redefine
the claim term and set forth the uncommon definition so as to put one reasonably skilled
Application/Control Number: 09/998,152 Page 3
Art Unit: 2168
in the art on notice that the applicant intended to so redefine that claim term. Process
Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed.
Cir. 1999). The term "inventorying" in independent claims 2, 21, 31, 33 and 36 are used
by the claim to mean "transmitting", while the accepted meaning is "to make a detailed
list or survey." The term is indefinite because the specification does not clearly redefine
Claims 2 and 21 recite the limitation "said asset document information" [see claim
2 line 6; claim 21 line 8] . There is insufficient antecedent basis for this limitation in the
Claim 33 recites the limitation "the information" in line 8. There is insufficient
antecedent basis for this limitation in the claim.
Claims 3-7, 9-20, 22-24 and 35 are rejected based on dependency.
5. Claims 2-7, 9-31 , 33 and 35-37 are rejected under 35 U.S.C. 1 1 2, second
paragraph, as being incomplete for omitting essential elements, such omission
amounting to a gap between the elements. See MPEP § 2172.01 . The omitted
elements are: operational steps for automated "aggregation and authentication of asset
documents" within the body of the claim. Note independent claims 2, 21, 25, 31, 33, 36
and 37 recite that the claim is directed to automated aggregation and authentication of
asset documents, however the body of the claim omits such operational procedures.
Independent claim 30 omits limitation that recite "means for managing commercial
Application/Control Number: 09/998,1 52 Page 4
Art Unit: 2168
mortgage loans". Claims 3-7, 9-20, 22-24, and 26-29 are rejected based on
Allowable Subject Matter
6. Claims 2-7, 9-31 , 33 and 35-37 would be allowable if rewritten or amended to
overcome the rejection(s) under 35 U.S.C. 1 12, 2nd paragraph, set forth in this Office
Response to Arguments
7. Applicant's arguments, see page 18-24, filed March 3, 2006, with respect to the
rejection(s) of claim(s) 1-37 under 35 USC 102(e) and 103(a) have been fully
considered and are persuasive. Therefore, the rejections has been withdrawn.
However, upon further consideration, a new ground(s) of rejection is made under 35
USC 112 second paragraph.
8. The prior art made of record and not relied upon is considered pertinent to
Ashenmil etal. US Patent 6,615,187 B1
Graff US Patent 7,107,239 B2
Application/Control Number: 09/998,152 Page 5
Art Unit: 2168
9. Applicant's amendment necessitated the new ground(s) of rejection presented in
this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
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
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 date of this final action.
1 0. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Greta L. Robinson whose telephone number is
(571 )272-41 18. The examiner can normally be reached on M-F 9:30AM-6:00PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Tim T. Vo can be reached on (571 )272-3642. The fax phone number for the
organization where this application or proceeding is assigned is 571-273-8300.
Application/Control Number: 09/998,152
Art Unit: 2168
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January 5, 2007