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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 
www.usplo.gtiv 



APPLICATION NO. 


FILING DATE 


FIRST NAMED INVENTOR 


ATTORNEY DOCKET NO. 


CONFIRMATION NO, 


09/998,152 


11/30/2001 


Donald P. Coleman 


010520 


5007 



262S5 7590 12/12/2007 

KJRKPATRICK & LOCK-HART PRESTON GATES ELLIS LLP 
535 SMITHFIELD STREET 
PITTSBURGH, PA 15222 



EXAMINER 



ROBINSON, GRETA LEI- 



ART UNIT 



PAPER NUMBER 



2168 



MAIL DATE 



12/12/2007 



DELIVERY MODE 



PAPER 



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 


Application No. 

09/998,152 


Applicant(s) 

COLEMAN, DONALD P. 


Examiner 

Greta L. Robinson 


Art Unit 

2168 





.. 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). 

Status 

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. 

Application Papers 

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. 



Attachment(s) 

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 

09/998,152 

Art Unit: 2168 

DETAILED ACTION 
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 
PTO 1449. 

Drawings 

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 



Application/Control Number: 

09/998,152 

Art Unit: 2168 



Page 3 



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 
notified. 

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 



Application/Control Number: 

09/998,152 

Art Unit: 2168 



Page 4 



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 
of Allowability. 



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 

09/998,152 

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 

09/998,152 

Art Unit: 2168 

Conclusion 

9. The prior art made of record and not relied upon is considered pertinent to 
applicant's disclosure. 

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. 



Application/Control Number: 

09/998,152 

Art Unit: 2168 




Robinsor 
"Primary Examiner 
December 07, 2007