Ex parte McEntee

• Decision Date: 12 May 2022
• Docket Number: Application 14/680,391,Appeal 2021-003477
• Parties: Ex parte CHRISTOPHER MCENTEE, BRENDA B. CLEM, JOSEPH MICHALOWSKI, and ROBYN PIATT Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte CHRISTOPHER MCENTEE, BRENDA B. CLEM, JOSEPH MICHALOWSKI, and ROBYN PIATT Technology Center 3600

Appeal 2021-003477

Application 14/680, 391

United States Patent and Trademark Office, Patent Trial and Appeal Board

May 12, 2022

FILING DATE: 04/07/2015

Before JOSEPH L. DIXON, ST. JOHN COURTENAY, III, and CATHERINE SHIANG, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge SHIANG. Opinion Concurring in part and dissenting in part filed by Administrative Patent Judge DIXON.

DECISION ON APPEAL

CATHERINE SHIANG, Administrative Patent Judge.

Appellant^[1] appeals under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-19, which are all the claims pending and rejected in the application. Appeal Br. 1. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

1

STATEMENT OF THE CASE

Introduction The present invention relates to "systems and methods of data management, and more specifically to improving data processing and management." Spec. ¶1- In particular,

[i]n one exemplary embodiment, the present disclosure establishes central data management functionality that permits counterparties, operating with different data sources and different data sets in the purchasing and sale of assets to register, assign, control, settle and transfer data and information to effect the transfer of ownership rights of assets

Spec. ¶ 16. Claim 1 is exemplary:

1. A system for data validation and management comprising

one or more computer devices configured to convert data having multiple data formats into data having a single format; and

a validation sub-system configured to extract and automatically validate elements of the converted data, said one or more computer devices each comprising a processing component configured to execute computer-readable instructions, wherein when executed, the processing component causes the one or more computer devices to:

receive asset data relating to one or more assets from one or more data sources through a wired or wireless network, the asset data comprising the plurality of data formats, the asset data further comprising an electronic asset file, an electronic note and a meta-data package describing contents of the electronic asset file and the electronic note, said electronic note defining a legal instrument representing ownership rights associated with said one or more assets, said electronic note including at least one user-assigned electronic signature,

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analyze content of the meta-data package to confirm that the contents of the electronic asset file and the electronic note meet delivery standards and eligibility requirements,

normalize the asset data comprising a plurality of data formats to asset data comprising a single, uniform format, wherein normalize the asset data further comprises at least one of a translation, transformation and conversion of the asset data comprising the plurality of data formats,

receive compliance data from a data management system or other party through a wired or wireless network, the compliance data comprising one or more data formats,

normalize the compliance data comprising one or more data formats to compliance data comprising the single, uniform format, wherein normalize the compliance data comprises at least one of a translation, transformation and conversion of the compliance data comprising one or more formats, and activate the validation sub-system when the asset data and the compliance data are both normalized, the

activated validation sub-system comprising specialized instructions that, when executed, cause the validation sub-system to:

extract one or more data elements from the asset data comprising the uniform format, automatically validate the one or more data elements, wherein the validating comprises:

comparing the one or more data elements to one or more requirements set by the compliance data comprising the uniform format,

transmitting a confirmation to the processing component when the one or more data elements match the one or more compliance data requirements, and

generating and embedding data variables into the electronic asset file and the electronic note and updating the meta-data package to reflect compliance with the delivery standards and the eligibility requirements, based on the analyzed

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meta-data package content, said data variables different from the at least one user-assigned electronic signature, said data variables being assigned and embedded by the one or more computer devices, and

initiate an asset transaction only when the processing component receives the confirmation from the validation subsystem, the asset transaction comprising the one or more data elements.

References and Rejections^[2]

Claims Rejected	35 U.S.C. §	Reference(s)/Basis
1-19	112(a)	Written Description
1-19	101	Eligibility
1-19	103	Trimble (US 7, 818, 657 B1; Oct. 19, 2010), Hu (US 2012/0143748 A1; June 7, 2012)

ANALYSIS

35 U.S.C. § 112(a)

The Examiner finds that claims 1-19 fail to comply with the written-description requirement with respect to the claimed "said data variables different from the at least one user-assigned electronic signature, said data variables being assigned and embedded by the one or more computer devices." See Final Act. 2-3; Ans. 3-5.

4

We disagree. To satisfy the written-description requirement, the disclosure must reasonably convey to skilled artisans that Appellant possessed the claimed invention as of the filing date. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Specifically, the description must "clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed" and

the test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.

.... [T]he level of detail required to satisfy the written description requirement varies depending on the nature and scope of the claims and on the complexity and predictability of the relevant technology. For generic claims, we have set forth a number of factors for evaluating the adequacy of the disclosure, including "the existing knowledge in the particular field, the extent and content of the prior art, the maturity of the science or technology, [and] the predictability of the aspect at issue."

Id. (internal quotations and citations omitted).

[T]he description requirement does not demand any particular form of disclosure, or that the specification recite the claimed invention in haec verba ....

Id. at 1352 (citations omitted).

Here, we agree with Appellant that the Specification reasonably conveys to skilled artisans that as of the filing date, Appellant possessed the claimed invention with respect to the claimed "said data variables different from the at least one user-assigned electronic signature, said data variables being assigned and embedded by the one or more computer devices." See

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Ariad Pharms., 598 F.3d at 1351; App. Br. 8-10; Reply Br. 2-3. The Specification explains:

In an embodiment, the electronic clearing house 102 may automatically normalize (e.g., translate, transform, and/or convert) the received data to predefined standards and/or requirements. If the originator 101 's submission meets the clearing house 102 standards and requirements, the clearing house 102 may respond with an electronic message that includes a set of variables that may be sent to the loan origination system and/or a data warehouse. These data variables may persist embedded within the electronic loan file and note. They may become part of a permanent meta-data package for the loan file and note once it is underwritten, closed and sold to an end investor 105.

Spec. ¶ 28. Further, "[t]he borrower may optimally sign the required documents through an e-signature process that relies on a unique tamper evident digital signature for that individual borrower's legal acceptance of the terms and conditions of the loan agreements." Spec. ¶37. The Specification also explains that "[t]he data may have different formats or the data may be configured or arranged according to different standards." Spec. ¶ 2.

Therefore, the "specification . . . describe[s] an invention understandable to th[e] skilled artisan and show[s] that the inventor actually invented the invention claimed" with respect to the claimed "said data variables different from the at least one user-assigned electronic signature, said data variables being assigned and embedded by the one or more computer devices." Ariad Pharms., 598 F.3d at 1351.

Accordingly, we reverse the Examiner's written description rejection of claims 1-19 under 35 U.S.C. § 112(a).

6

35 U.S.C. § 101

As articulated by the Federal Circuit, the Examiner has the burden of proving unpatentability by preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) ("preponderance of the evidence is the standard that must be met by the PTO in making rejections"). When factual findings are required, the Examiner "must make the necessary findings and have an adequate 'evidentiary basis for [the] findings'" and "must examine the relevant data and articulate a satisfactory explanation for [the] action including a rational connection between the facts found and the choice made." In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) (citations omitted).^[3]

In this case, we have reviewed the Examiner's rejection in light of...