United States Patent and Trademark Office
UNITED STATES DEPARTMENT 01' COMMERCE
Unitt'ti Slntcs Pnlvnt inul Truili'mark 01'llcv
Address: COMMISSIONEK FOR PATEN TS
P.O. Box 1-150
Alexandria, Virginia 22313-1450
FIRST NAMED INVENTOR
ATTORNEY DOCKET NO.
Donald P. Coleman
262S5 7590 12/12/2007
KJRKPATRICK & LOCK-HART PRESTON GATES ELLIS LLP
535 SMITHFIELD STREET
PITTSBURGH, PA 15222
ROBINSON, GRETA LEI-
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTO1.-90A (Rev. 04/07)
Office Action Summary
COLEMAN, DONALD P.
Greta L. Robinson
.. The MAILING DA TE 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 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).
1)^ Responsive to communication(s) filed on 27 September 2007 .
2a)D This action is FINAL. 2b)S 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. 11, 453 O.G. 213.
Disposition of Claims
4) E3 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4a) Of the above claim(s) is/are withdrawn from consideration.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) IEl Claim(s) 2-7.9-20.25-31.35 and 37 is/are allowed.
6) ^ Claim(s) 21-24 and 36 is/are rejected.
7) D Claim(s) is/are objected to.
8) D Claim(s) are subject to restriction and/or election requirement.
9) D The specification is objected to by the Examiner.
10) ^1 The drawing(s) filed on 30 November 2001 is/are: a)D accepted or b)Kl 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. § 1 19(a)-(d) or (f).
a)D All b)Q Some * c)D None of:
1 .□ 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.
1) ^ Notice of References Cited (PTO-892)
2) fj Notice of Draftsperson's Patent Drawing Review (PTO-948)
3) fj3 Information Disclosure Statement(s) (PTO/SB/08)
Paper No(s)/Mail Date 6/12/07 & 9/27/07 .
4) D Interview Summary (PTO-41 3)
Paper No(s)/Mail Date. .
5) CD Notice of Informal Patent Application
6) □ Other: .
U.S. Patent and Trademark Office
PTOL-326 (Rev. 08-06)
Office Action Summary
Part of Paper No./Mail Date 20071207
Application/Control Number: Page 2
Art Unit: 2168
Continued Examination Under 37 CFR 1.114
1. A request for continued examination under 37 CFR 1.114, including the fee set
forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
application is eligible for continued examination under 37 CFR 1.114, and the fee set
forth in 37 CFR 1 .17(e) has been timely paid, the finality of the previous Office action
has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March
15, 2007 and June 12, 2007 has been entered.
2. Claims 1 , 8, 32 and 34 have been cancelled. Claims 2,6,21, 25, 30, 31 , 33 and
36 have been amended.
Information Disclosure Statement
3. The information disclosure statement (IDS) submitted on September 27, 2007
and June 12, 2007 have been considered by the examiner, note attached copies of form
4. The drawings are objected to as failing to comply with 37 CFR 1 .84(p)(4)
because reference character "11" has been used to designate multiple elements in the
same view. Note Figure 1; also note Figure 11 reference characters 169, 177, 179 and
181. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in
Art Unit: 2168
reply to the Office action to avoid abandonment of the application. Any amended
replacement drawing sheet should include all of the figures appearing on the immediate
prior version of the sheet, even if only one figure is being amended. Each drawing sheet
submitted after the filing date of an application must be labeled in the top margin as
either "Replacement Sheet" or "New Sheet" pursuant to 37 CFR 1.121(d). If the
changes are not accepted by the examiner, the applicant will be notified and informed of
any required corrective action in the next Office action. The objection to the drawings
will not be held in abeyance.
INFORMATION ON HOW TO EFFECT DRAWING CHANGES
Replacement Drawing Sheets
Drawing changes must be made by presenting replacement sheets which incorporate
the desired changes and which comply with 37 CFR 1 .84. An explanation of the
changes made must be presented either in the drawing amendments section, or
remarks, section of the amendment paper. Each drawing sheet submitted after the
filing date of an application must be labeled in the top margin as either "Replacement
Sheet" or "New Sheet" pursuant to 37 CFR 1 .121 (d). A replacement sheet must include
all of the figures appearing on the immediate prior version of the sheet, even if only one
figure is being amended. The figure or figure number of the amended drawing(s) must
not be labeled as "amended." If the changes to the drawing figure(s) are not accepted
by the examiner, applicant will be notified of any required corrective action in the next
Office action. No further drawing submission will be required, unless applicant is
Identifying indicia, if provided, should include the title of the invention, inventor's name,
and application number, or docket number (if any) if an application number has not
been assigned to the application. If this information is provided, it must be placed on the
front of each sheet and within the top margin.
Annotated Drawing Sheets
Art Unit: 2168
A marked-up copy of any amended drawing figure, including annotations indicating the
changes made, may be submitted or required by the examiner. The annotated drawing
sheet(s) must be clearly labeled as "Annotated Sheet" and must be presented in the
amendment or remarks section that explains the change(s) to the drawings.
Timing of Corrections
Applicant is required to submit acceptable corrected drawings within the time period set
in the Office action. See 37 CFR 1 .85(a). Failure to take corrective action within the set
period will result in ABANDONMENT of the application.
If corrected drawings are required in a Notice of Allowability (PTOL-37), the new
drawings MUST be filed within the THREE MONTH shortened statutory period set for
reply in the "Notice of Allowability." Extensions of time may NOT be obtained under the
provisions of 37 CFR 1.136 for filing the corrected drawings after the mailing of a Notice
Claim Rejections - 35 USC § 101
5. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the
conditions and requirements of this title.
6. Claims 21-24 and 36 are rejected under 35 U.S.C. 101 because the claimed
invention is directed to non-statutory subject matter.
Claims 21-24 and 36 are directed to a computer readable medium; however the
specification provides evidence that the medium is intended to cover embodiments
which are non-statutory , i.e., the medium is not limited to those media which fall within a
statutory category of invention and enable the functionality of what's stored thereon to
be realized. See page 13 paragraph 0052 of the disclosure in which the medium is
Application/Control Number: Page 5
Art Unit: 2168
defined to include a carier wave. A claim to a proper computer readable medium (not
e.g. a signal or program listing on paper) encoded with functional descriptive material
that can function with a computer to effect a useful, concrete and tangible result (e.g.
executing a stock transaction) satisfies the practical application test. However, the
meets and bounds of the claim define a computer readable medium as carrier waves,
this type of medium is nonstatutory.
Response to Arguments
7. Applicant's arguments with respect to claims 21-24 and 36 have been considered
but are moot in view of the new ground(s) of rejection. Claims 21-24 and 36 have been
rejected under 35 USC 101.
Allowable Subject Matter
8. Claims 2-7, 9-20, 25-31 , 33, 35 and 37 are allowed. The prior art of record fails to
teach iautomated aggregation and authentication of asset documents as cited in
independent claims 2, 25, 30, 31, 33 and 37. Specifically, inventorying an asset
document into an associated record in a database on a flow basis, analyzing contents of
the asset document to ensure compliance with a standard pursuant to securitization of
multiple assets, wherein at least one of the multiple assets comprises a commercial
mortage loan, providing specific information on demand, and generating common
information and/or missing data is not disclosed as claimed.
Application/Control Number: Page 6
Art Unit: 2168
9. The prior art made of record and not relied upon is considered pertinent to
Heffneret al. US Patent Application Publication No. 2003/0018558 A1
Bakalash et al. US Patent Application Publication No. 2002/0029207 A1
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)272-4118. 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.
Information regarding the status of an application may be obtained from the
Patent Application Information Retrieval (PAIR) system. Status information for
published applications may be obtained from either Private PAIR or Public PAIR.
Status information for unpublished applications is available through Private PAIR only.
For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
you have questions on access to the Private PAIR system, contact the Electronic
Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
USPTO Customer Service Representative or access to the automated information
system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
Art Unit: 2168
December 07, 2007