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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`Askeladden L.L.C.
`Petitioner
`
`v.
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`NEXTCARD, LLC
`Patent Owner
`
`
`U.S. Patent No. 7,552,080
`Filing Date: March 9, 2001
`Issue Date: June 23, 2009
`Title: CUSTOMIZED CREDIT OFFER STRATEGY BASED ON TERMS
`SPECIFIED BY AN APPLICANT
`
`
`
`
`Inter Partes Review No. Unassigned
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`
`
`PETITION FOR INTER PARTES REVIEW
`UNDER 35 U.S.C. §§ 311-319 AND 37 C.F.R. § 42.100 ET SEQ.
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`

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`TABLE OF CONTENTS
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`TABLE OF CONTENTS ............................................................................................ i
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`LIST OF EXHIBITS ................................................................................................ iii
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`I.
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`II.
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`Introduction ...................................................................................................... 1
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`Formalities ....................................................................................................... 1
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`A.
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`B.
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`C.
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`Real Party in Interest ............................................................................. 1
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`Related Matters ...................................................................................... 1
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`Payment of Fee ...................................................................................... 1
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`D. Designation of Lead Counsel and Backup Counsel .............................. 2
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`E.
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`F.
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`G.
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`Service ................................................................................................... 2
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`Power of Attorney ................................................................................. 2
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`Standing ................................................................................................. 2
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`III.
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`Statement of Relief Requested ........................................................................ 3
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`IV. Factual Background ......................................................................................... 3
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`A. Declaration Evidence ............................................................................ 3
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`B.
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`C.
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`Summary of Willard .............................................................................. 3
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`Person of Ordinary Skill in the Art ....................................................... 6
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`V.
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`Claim Construction .......................................................................................... 7
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`VI. Full Statement of the Reasons for the Relief Requested ................................. 9
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`A.
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`B.
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`Claims 1-6 and 9-11 should be cancelled under 35 U.S.C.
`§ 103 as being obvious over Tengel (Exhibit 1006),
`Walker I (Exhibit 1007), and Nabors (Exhibit 1008) ........................... 9
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`Claim 7 should be cancelled under 35 U.S.C. § 103 as
`being obvious over Tengel, Walker I, Nabors, and
`Walker II (Exhibit 1010) ..................................................................... 53
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`i
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`C.
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`Claim 8 should be cancelled under 35 U.S.C. § 103 as
`being obvious over Tengel, Walker I, Nabors, and
`Watson (Exhibit 1011) ........................................................................ 56
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`VII. Conclusion ..................................................................................................... 64
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`ii
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`LIST OF EXHIBITS
`Exhibit 1001: U.S. Patent No. 7,552,080 to Willard et al. (“the ’080 patent”,
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`
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`“Willard”)
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`
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`Exhibit 1002: File History for U.S. Patent Application No. 09/802,481, which
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`led to Willard
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`Exhibit 1003: Assignment History for Willard
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`Exhibit 1004: Attorney/Agent Correspondence Address for Willard
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`Exhibit 1005: Form PTO-SB/42
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`Exhibit 1006: U.S. Patent No. 5,940,812 to Tengel et al. (“Tengel”)
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`Exhibit 1007: U.S. Patent No. 5,794,207 to Walker et al. (“Walker I”)
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`Exhibit 1008: U.S. Patent No. 7,236,983 to Nabors et al. (“Nabors”)
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`Exhibit 1009: U.S. Patent Application No. 09/188,863 to Nabors et al.
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`(“Nabors Priority Application”)
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`Exhibit 1010: U.S. Patent No. 5970,478 to Walker et al. (“Walker II”)
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`Exhibit 1011: U.S. Patent No. 8,271,379 to Watson (“Watson”)
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`Exhibit 1012: U.S. Provisional Application No. 60/111,028 to Watson
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`(“Watson Provisional”)
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`
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`Exhibit 1013: Declaration of Dr. Justin Douglas Tygar, Ph.D. (“Tygar”)
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`iii
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`I.
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`Introduction
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`Askeladden L.L.C. (“Petitioner” or “Askeladden”) hereby petitions for
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`initiation of inter partes review of U.S. Patent No. 7,552,080 (“Willard”). Willard
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`is assigned to NEXTCARD, LLC (see Exhibit 1003) and issued on June 23, 2009,
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`more than nine months to the filing of this petition. Petitioner has not been served
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`with a complaint for infringement of Willard and it is eligible for inter partes
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`review.
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`II.
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`Formalities
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`A. Real Party in Interest
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`Pursuant to 37 C.F.R. § 42.8(b)(1), Petitioner certifies that Askeladden is the
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`real party-in-interest.
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`B. Related Matters
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`Petitioner is not aware of any related matters.
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`C.
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`Payment of Fee
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`This petition is accompanied by a payment of $23,000 and requests review
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`of fewer than 20 claims of Willard. See 37 C.F.R. § 42.15. The Commissioner is
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`hereby authorized to charge any fees required by this action or any future action to
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`Deposit Account No. 20-1430. Thus, this petition meets the fee requirements under
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`35 U.S.C. § 312(a)(1).
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`1
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`D. Designation of Lead Counsel and Backup Counsel
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`Lead Counsel for Petitioner is John Steven Gardner, USPTO Registration
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`No. 41,772, of Kilpatrick Townsend & Stockton LLP. Back-up counsel for
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`Petitioner are Alton L Absher III, USPTO Registration No. 60,687, and Bryan S.
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`Foster, USPTO Registration No. 68,537, both of Kilpatrick Townsend & Stockton
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`LLP.
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`E.
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`Service
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`As identified in the attached Certificate of Service, a copy of the present
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`petition, in its entirety, is being served to the address of the attorney or agent of
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`record. Petitioner may be served at its counsel, Kilpatrick Townsend & Stockton
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`LLP at 1001 W 4th Street, Winston-Salem, North Carolina 27101, or via email at
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`AskeladdenWillardIPR@kilpatricktownsend.com.
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`F.
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`Power of Attorney
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`A power of attorney is being filed with the designation of counsel in
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`accordance with 37 C.F.R. § 42.10(b).
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`G.
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`Standing
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`Petitioner certifies that the Willard patent is available for inter partes review
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`and that Petitioner is not barred or estopped from requesting inter partes review on
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`the grounds identified in this petition.
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`2
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`III. Statement of Relief Requested
`This petition requests cancellation of claims 1-11 of Willard as being
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`
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`obvious over each of the following combinations:
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`Obviousness under 35 U.S.C. § 103
`• Claims 1-6 and 9-11 are obvious over Tengel, Walker I, and Nabors
`• Claim 7 is obvious over Tengel, Walker I, Nabors, and Walker II
`• Claim 8 is obvious over Tengel, Walker I, Nabors, and Watson
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`IV. Factual Background
`A. Declaration Evidence
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`The declaration of Professor Justin Douglas Tygar, Ph.D., supports this
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`petition. See Ex. 1013. He offers his opinion with respect to the content and state
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`of the prior art, among other things. Dr. Tygar is a tenured Professor at the
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`University of California, Berkeley, with a joint appointment in the Department of
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`Electrical and Computer Science and the School of Information Management and
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`Systems. Tygar, §§ 1 and 2. His awards include a NSF Presidential Young
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`Investigator Award and an Okawa Foundation Fellowship. See id.; Tygar, Exhibit
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`A. He is the author of over 100 publications, including books, journal articles,
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`conference papers, and standards documents. Id.
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`B.
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`Summary of Willard
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`The application that issued as Willard was filed on March 9, 2001.
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`Generally, Willard concerns sending customized offers to applicants. See Willard,
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`Abstract, 1:24-26; Tygar, §§ 4 and 7.1. For example, Figure 7A, below,
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`3
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`“illustrat[es] a process for using applicant specified terms to obtain offers to
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`present to the applicant.” Willard, 2:27-30. Willard describes that at least one offer,
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`if available, is selected for a particular applicant based on terms requested by the
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`applicant – which may include preferred terms, a most important term, ranked
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`terms, desired changes to terms of a current card of the applicant. Willard, 3:57-66,
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`4:42-56, 4:61-63, 5:12-17, 5:21-22, 5:39-42, 5:50-60, 6:7-8. If a suitable offer is
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`available, it is transmitted to the applicant. Willard, Abstract, 1:60-67, claim 1.
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`Figure 6B, below, is “an illustration of a web page used to confirm an
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`applicant’s specification of terms and the selection of the most important term.”
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`Willard, 2:25-27.
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`4
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`In Figure 6B, the applicant has specified requested terms – such as an
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`interest rate, annual fee, credit limit, rewards program, or platinum card – and has
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`selected a requested term (in Figure 6B, interest rate) as the most important term.
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`See Willard, Figure 6B. A most important requested term is preferred over at least
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`one other requested term. See id.; see Tygar, 7.1.8-7.1.9.
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`Willard’s claims require determining a set of offers for the applicant and,
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`possibly, selecting at least one offer from the set of offers. See, e.g., Willard, claim
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`1; Tygar, 7.1.9. Once a set of offers has been determined for the applicant, the
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`claimed method can be satisfied in three distinct, mutually exclusive ways. First,
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`“if the set of offers includes at least one offer that meets all of the requested terms”
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`then “at least one offer [from the set of offers] that meets all of the requested
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`terms” can be selected and transmitted to the applicant. See, e.g., Willard, claim 1;
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`Tygar, § 7.5. Second, “if the set of offers does not include at least one offer that
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`5
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`meets all of the requested terms but includes at least one offer that meets at least
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`one of the preferred requested terms” then “at least one offer [from the set of
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`offers] that meets the at least one of the preferred requested terms” is selected and
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`transmitted to the applicant. See id.
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`Third, “if the set of offers does not include at least one offer that meets all of
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`the requested terms” and does not “include[] at least one offer that meets at least
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`one of the preferred requested terms” then “an offer from the set of offers” is “not
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`select[ed]” and thus no offer from the set of offers is transmitted to the applicant.
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`See id. Accordingly, two of the three ways in which the claimed method can be
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`satisfied are optional. See id. If no offer is selected from the set of offers, then no
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`offer from the set of offers is required to be transmitted to the applicant. See id.
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`C.
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`Person of Ordinary Skill in the Art
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`A person of ordinary skill in the art (“POSITA”) at the time of the alleged
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`invention would have been a person with at least a Bachelor’s degree in computer
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`science or a related field, or equivalent experience, and at least four years of
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`experience in electronic commerce, financing, loan processing, or related
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`experience. Tygar, 7.3.2. See also Tygar, §§ 6.2, 7.2-7.3. Dr. Tygar was a person
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`of at least ordinary skill in the art in 2001 and knew and worked with persons of
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`ordinary skill in the art at that time. See id. at § 7.3.
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`6
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`V. Claim Construction
`In inter partes review, claim terms of an unexpired patent are interpreted
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`
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`under a “broadest reasonable construction” standard. See 37 C.F.R. § 42.100(b).
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`The “terms are presumed to take on their ordinary and customary meaning.” See 77
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`Fed. Reg. 48699 (2012), Response to Comment 35. Interpretation of Willard’s
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`claims presented herein should not be viewed as constituting, in whole or in part,
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`Petitioner’s interpretation of such claims for the purposes of any litigation or
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`proceeding where the claim construction standard differs from the broadest
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`reasonable interpretation.
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`The independent claims of Willard recite optional elements that are not
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`required to be shown under the broadest reasonable interpretation. See Tygar, §
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`7.5. For example, claim 1, which is representative of the three independent claims,
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`includes the following elements phrased in the alternative:
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`• “if the set of offers includes at least one offer that meets all of the
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`requested terms ...”;
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`• “if the set of offers does not include at least one offer that meets all of
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`the requested terms but includes at least one offer that meets at least
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`one of the preferred requested terms ...”; and
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`• “otherwise ….”
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`7
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`It is not possible for a set of offers to meet more than one of these elements. Id.
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`
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`Thus, in order to render the claims obvious, the prior art only needs to teach or
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`suggest one of these three elements under the broadest reasonable interpretation.
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`Id. The Federal Circuit explained: “It is of course true that method steps may be
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`contingent. If the condition for performing a contingent step is not satisfied, the
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`performance recited by the step need not be carried out in order for the claimed
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`method to be performed.” Cybersettle, Inc. v. Nat’l Arbitration Forum, Inc., 243
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`Fed. Appx. 603, 607 (Fed. Cir. 2007). See also Ex Parte Katz, No. 09/828,122,
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`2011 WL 514314, at *4 (B.P.A.I. Jan. 27, 2011) (“As under the broadest scenario,
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`the steps dependent on the ‘if’ conditional would not be invoked, the Examiner
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`was not required to find these limitations in the prior art in order to render the
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`claims obvious.”); Ex Parte Rokosz, No. 10/331,413, 2009 WL 4695144, at *2
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`(B.P.A.I. Nov. 24, 2009) (“[O]nly one of the recited alternatives needs to be
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`disclosed by the reference.”); MPEP § 2111.04.
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`Also, the following broadest reasonable constructions primarily provide
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`clarifications to the wording in claims 1, 7, and 9.
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`• “[T]erms requested by the applicant” and “the requested terms” (used
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`interchangeably in all claims) both mean “terms specified by the
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`applicant.” See Willard, 1:23-25, 2:8-9, 2:13-17, 2:23-24, 2:65-66,
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`4:36-63, 5:7-21, 5:27-42, Figures 2-4 and 6A; Tygar, 7.5.11. Willard
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`8
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`describes that “requested terms” are specified (e.g., entered and/or
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`selected) by the applicant to obtain them from the applicant. See id.
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`Moreover, a POSITA would understand that a “term” is broadly
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`described in Willard and can include, but is not limited to, an
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`introductory interest rate, an ongoing interest rate, an annual fee, a
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`credit limit, an existence of a rewards program, a type of card, etc.
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`which Willard explicitly provides as examples of “terms.” See
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`Willard, 4:36-41, 5:7-14, Figures 2-4 and 6A; Tygar, 7.5.11.
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`• “[D]esired changes to those terms” (claim 7) means “desired changes to
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`the terms of the current card of the applicant” (see Willard, 1:53-56,
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`2:57-61; Tygar, 7.5.11).
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`• “[T]he requested term” (claim 9) means “at least one of the plurality of
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`terms requested by the applicant” (see Tygar, 7.5.11).
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`VI. Full Statement of the Reasons for the Relief Requested
`A. Claims 1-6 and 9-11 should be cancelled under 35 U.S.C. § 103 as
`being obvious over Tengel (Exhibit 1006), Walker I (Exhibit
`1007), and Nabors (Exhibit 1008)
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`
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`1. Tengel, Walker I, and Nabors are Prior Art
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`U.S. Patent No. 5,940,812 to Tengel et al. (“Tengel”) was filed August 19,
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`1997 and issued August 17, 1999. See Exhibit 1006. Tengel is prior art to Willard
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`under pre-AIA §§ 102(a), (b), and (e).
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`U.S. Patent No. 5,794,207 to Walker et al. (“Walker I”) was filed September
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`4, 1996 and issued August 11, 1998. See Exhibit 1007. Walker I is prior art to
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`Willard under pre-AIA §§ 102(a), (b), and (e).
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`U.S. Patent No. 7,236,983 to Nabors et al. (“Nabors”) was filed August 13,
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`1999 and claims priority to U.S. Patent Application No. 09/188,863 (“Nabors
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`Priority Application”), filed November 9, 1998. See Exhibits 1008-1009. Nabors is
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`prior art to Willard under pre-AIA § 102(e).
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`2. Claim 1, Preamble
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`Claim 1, Preamble: A computer implemented method of transmitting a
`customized offer to an applicant comprising:
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`To the extent, if any, it is determined that the preamble is a limitation,
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`Tengel, Walker I, and Nabors each discloses or suggests the preamble. See Tygar,
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`§ 8.6.1.1. Willard explains that a customized offer is transmitted when “[a]
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`requested term is obtained from the applicant,” “a set of offers is determined for
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`the applicant,” and at least one “offer is selected … using the requested term and
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`the selected offer is transmitted to the applicant.” See, e.g., Willard, 1:60-65. Thus,
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`a customized offer in Willard is one that is selected using a requested term. Tygar,
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`8.6.1.1.1.
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`Tengel discloses a loan origination system for automatically matching a best
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`available loan to a potential borrower via a global telecommunications network,
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`such as the Internet. See Tengel, Abstract; Figures 1 and 2A (#206, #210, #212,
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`10
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`#214); Tygar, Exhibit B. In Tengel, customized loan offers are transmitted to the
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`applicant. See Tengel, 3:17-20, 9:32-43, 9:44-54, 9:55-59, Figure 2B (#216) and
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`Figure 6 Tygar, Exhibit B. Accordingly, Tengel discloses the preamble of claim 1.
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`See Tygar, 8.6.1.1.2 and Exhibit B.
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`Walker I and Nabors also each disclose transmitting a customized offer to an
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`applicant. See Walker I, Abstract, 15:60-16:51, 20:2-4, 20:10-15, 20:40-51, 22:52-
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`63,23:2-5, and Figures 1, 5, 6, 11, and 18; Nabors, 3:40-58, 7:6-30, 8:62-9:14,
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`12:30-42, and Figures 4-5, 7-8, and 11-17 (see Nabors Priority Application, 4:9-20,
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`8:23-9:7, 11:8-20, 15:30-15:7); Figures 4-5, 7-8, and 11-17; Tygar, 8.6.1.1.3,
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`8.6.1.1.4 and Exhibit B.
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`Claim 1, Preamble:
`See Tygar, Exhibit B.
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`“A loan origination system including an apparatus and method for automatically
`matching a best available loan to a potential borrower, via a global
`telecommunications network ...” Tengel, Abstract.1
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`“[T]he ranking of best loans is displayed to the potential borrower on a screen of
`the consumer terminal via the global telecommunications network.” Tengel,
`3:17-20.
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`“A first ranking of best loans is determined for each individual loan attribute
`(step 212). Referring to FIG. 6, a ranking of best loans 600 is displayed on a
`consumer screen 650 of a consumer terminal.” Tengel, 9:34-37.
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`“The best loan having a highest weighted composite score is displayed in a
`seventh column 614 of FIG. 6.” Tengel, 9:46-48.
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`1 Emphasis added unless otherwise noted.
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`11
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`“The rankings of best loans are displayed to the potential borrower on the screen
`650 of a consumer terminal ... [T]he rankings of best loans may also be displayed
`in a list form further including the second and third best loans in addition to the
`first best loan.” Tengel, 9:55-59.
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`Tengel, Figure 1.
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`Tengel, Figure 2A.
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`12
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`See Tengel, 9:32-54, Figures 2A, 2B, and 6; Walker I, Abstract, 15:60-16:51, 20:2-
`4, 20:10-15, 20:40-51, 22:52-63,23:2-5, and Figures 1, 5, 6, 11, and 18; Nabors,
`3:40-58, 7:6-30, 8:62-9:14, 12:30-42, and Figures 4-5, 7-8, and 11-17 (see Nabors
`Priority Application, 4:9-20, 8:23-9:7, 11:8-20, 15:30-15:7; Figures 4-5, 7-8, and
`11-17).
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`3. Motivation to Combine
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`There are multiple independent reasons that a POSITA would have been
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`motivated to combine the teachings of Tengel with those of Walker I, or with those
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`of Nabors, or with both. Tygar, § 8.6.1.2.
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`One reason is that modifying Tengel to allow the applicant to specify
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`particular terms (e.g., an interest rate or range of interest rates, a credit amount,
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`etc.) for a selected product type – such as a credit card or mortgage – as disclosed
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`by Walker I would have been a combination of elements according to known
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`methods, yielding a predictable result. See id. For example, Tengel states that
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`“each of the weighting factors may be specified by the potential borrower
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`depending on the importance of each of the loan attributes to the potential
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`borrower.” Tengel, 9:49-54. A POSITA would have understood that there were
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`multiple known techniques for weighting factors, and would have thus been
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`motivated to combine Tengel with Walker I’s teaching of a point system in which
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`“the buyer may indicate that a window seat is worth two points, an aisle seat worth
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`one point, a nonstop flight worth four points, etc.” (Walker I, 16:31-35), and/or
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`with Nabors’s teaching of “assigning a rank between 1 and 5 to each attribute, 5
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`being high priority and 1 being low priority.” Tygar, 8.6.1.2.2; Nabors, 7:18-20. A
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`POSITA would have been motivated to combine these known methods, yielding
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`the predictable result of allowing a user to provide terms in a more granular
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`manner. Tygar, 8.6.1.2.2; see Tengel, 3:1-9, 8:31-40, 8:50-58, 9:49-54, 9:62-63,
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`Figures 4 and 5; Walker I, 15:60-16:51, 32:16-22, Figure 5 (#510, #515, #520,
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`#525, #530); Nabors, Abstract, 2:40-58, 3:40-58; 7:6-24.
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`Another independent motivation to combine is that Nabors explicitly
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`describes improving Walker I by using a customer-driven system where a customer
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`customizes a product and submits a quote request rather than a binding offer. See
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`Nabors, 2:40-58 (explaining that “U.S. Pat. No. 5,794,207 to Walker ... does not,
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`however, solve all of the foregoing problems,” and explaining that the invention
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`disclosed in Nabors is thus needed). A POSITA would have been motivated to
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`follow the suggestion in Nabors and combine its teachings with those of Walker I.
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`Tygar, 8.6.1.2.3.
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`Another motivation to combine is that Tengel, Walker I, and Nabors are in
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`the same general field, including the field of facilitating the selection of products in
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`commerce and software related to such facilitating. Tygar, 8.6.1.2.4. Also, Tengel
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`and Walker I are both in Class 705 and Nabors is in Class 707—both classes are in
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`the “data processing” field. Additionally, a POSITA would have understood that
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`modifying Tengel to include the teachings of Walker I and Nabors would have
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`been a simple substitution of one known element for another to obtain predictable
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`results. Tygar, 8.6.1.2.4. For example, they each disclose a simple way to allow a
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`customer to identify and rank or prioritize terms, which would be the predictable
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`result of substituting the teachings of Walker I and/or Nabors. Id.; Tengel 3:1-9
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`(ranking loans using a “weighting factor that is selected by the potential
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`borrower”); Walker I, 16:31-37 (using a point system to indicate preferences of
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`terms); Nabors 7:18-20 (assigning a rank to each term). A POSITA would have
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`understood it to be simple to substitute one or more of these elements for another.
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`Tygar, 8.6.1.2.4. Further, a POSITA would have understood that modifying Tengel
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`to include the teachings of Walker I or Nabors would have been using a known
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`technique to improve similar methods in the same way. Id. As explained above, the
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`methods in Tengel, Walker I, and Nabors are similar and were known. A POSITA
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`would have understood that combining these references’ teachings would have
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`improved Tengel’s method in a similar way by allowing a user to have more
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`control over prioritizing terms. Id.
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`This Petition also includes additional independent motivations to combine in
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`the discussion of various claim limitations herein.
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`4. Claim 1, Element A
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`Claim 1, Element A: receiving over a network a plurality of terms requested by
`the applicant, wherein at least one of the requested terms is indicated by the
`applicant as preferred over at least another one of the requested terms;
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`Tengel, Walker I, and Nabors each discloses or suggests element A of claim
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`1. See Tygar, § 8.6.1.3 and Exhibit B.
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`Tengel discloses “receiving over a network a plurality of terms requested by
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`the applicant,” as recited in claim 1. In Tengel, an applicant uses a consumer
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`terminal – such as a PC that supports Internet Explorer or Netscape Navigator –
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`coupled to a global communications network, such as the Internet, to fill out an
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`electronic form that allows the applicant to select a loan type and specify weighting
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`factors for loan attributes to describe the importance of the loan attributes to that
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`particular applicant. See Tengel, Abstract, 2:33-37, 3:5-9, 8:31-40, 8:50-58, 9:51-
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`54, 10:52-54; Tygar, 8.6.1.3.2-8.6.1.3.5. Loan attributes include, for example,
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`interest rate, origination fee, closing costs, and the like. See Tengel, Fig. 4; col.
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`7:53-8:18. The applicant uses the consumer terminal to submit the form to the loan
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`origination system over the global communications network. See Tengel, Abstract,
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`8:50-58, Figure 1 (#104-#112), Figure 2A (#206), and Figure 5; Tygar, 8.6.1.3.2-
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`8.6.1.3.5. Tengel thus discloses that the server terminal receives a plurality of
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`terms (e.g., loan type and weighting factors for the loan attributes specified by the
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`applicant) requested by the applicant over a network. See id.
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`Tengel also discloses “wherein at least one of the requested terms is
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`indicated by the applicant as preferred over at least another one of the requested
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`terms,” as recited in claim 1. For example, Tengel describes that the applicant can
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`enter the type of loan product that the applicant wants. See Tengel, 8:31-40, 8:50-
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`58, Figure 5. The type of loan product is a “term.” Tygar, 8.6.1.3.2, 8.6.1.3.5. A
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`POSITA would understand the loan type requested by the applicant indicates a
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`preference over at least one other term (such as a different loan type, an interest
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`rate, or origination fee) because the applicant only wants to consider loan offers for
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`that particular loan type regardless of the interest rate or origination fee for other
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`loan product types. See Tygar, 8.6.1.3.6.
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`Tengel further discloses that the applicant can specify weighting factors for
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`loan attributes (which are also terms) – such as interest rate, origination fee,
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`closing costs, annual fee, maximum loan term, etc. – based on the importance of
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`each loan attribute to the applicant. See Tengel, 3:1-9, 9:49-54, 9:62-63, Figure 4;
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`Tygar, 8.6.1.3.2, 8.6.1.3.5. Of course, the applicant could specify a higher
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`weighting factor for one attribute than for another attribute. See Tygar, 8.6.1.3.7.
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`Tengel thus discloses “wherein at least one of the requested terms is indicated by
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`the applicant as preferred over at least another one of the requested terms” as
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`recited in element A of claim 1. See Tengel, 3:1-9, 8:31-40, 8:50-58, 9:49-54, 9:62-
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`63, Figure 5; Tygar, 8.6.1.3.6-8.6.1.3.7.
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`Walker I and Nabors likewise disclose this limitation and allow specific
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`values for terms to be specified. See Tygar, 8.6.1.3.8-8.6.1.3.15. For example, in
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`Walker I, an applicant can select “mortgage” or “credit card” among other various
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`available product types – which Walker I calls “subjects.” See Walker I, 15:60-
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`16:11, 31:45-59, 32:16-22; Tygar, 8.6.1.3.8. A “subject” in Walker I is a term.
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`Tygar, 8.6.1.3.8. After selecting a product type, in Walker I, the applicant specifies
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`particular conditions/terms and values for these terms for the selected product type.
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`See Walker I, 15:60-16:51, 16:63-66, 17:8-10; Tygar, 8.6.1.3.8. For example,
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`Walker I describes an example where a specific interest rate range (i.e., 12% or
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`lower) and a specific credit line amount ($5,000) are specified for the interest rate
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`and credit line terms, respectively. See Walker, 32:18-19; Tygar, 8.6.1.3.9. A
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`POSITA would understand from Walker I that a condition/term requested by the
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`applicant can be preferred over one or more other conditions/terms requested by
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`the applicant. See id. Moreover, Walker I describes that an applicant can assign
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`point values to conditions/terms based on the importance of the conditions/terms to
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`the applicant. See Walker I, 16:28-37; Tygar, 8.6.1.3.9.
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`Nabors further discloses this limitation by allowing a customer to configure
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`a product and provide rankings of attributes for the product based on the
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`importance of the attributes to the customer. See Nabors, 7:6-24, 8:23-9:3, 10:16-
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`20, 10:55-67, 11:6-13; Tygar, 8.6.1.3.11. While Walker I describes allowing a
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`potential purchaser to specify conditions for a selected product type, Walker I
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`states that the purchaser initially makes a binding offer that any seller may accept
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`outright or provide a counteroffer to. See Walker I, Abstract, 15:45-16:45, 16:63-
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`17:7, 19:13-28, 22:40-23:18. Nabors explains that the Walker I system can also
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`lead to “an unscrupulous seller” accepting the offer. See Nabors, 2:40-55. Nabors
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`states that it improves upon Walker I by using a request for quote (RFQ) process
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`that allows a potential purchaser to receive multiple offers from target sellers that
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`are likely to have the desired product. See Nabors, 2:40-45, 4:58-5:15; Tygar,
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`8.6.1.3.13. This increases the likelihood of the potential purchaser receiving
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`competitive terms from sellers that offer the desired product. See id.
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`In Nabors, which primarily discusses embodiments specific to vehicle
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`implementations but is “applicable to any product available in multiple
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`configurations” (Nabors, Abstract) such as the products in Tengel and Walker I, a
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`potential purchaser can select a general product/term and specify additional
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`attributes/terms in creating an exact product. See Nabors, 7:6-30, 10:55-67; Tygar,
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`8.6.1.3.14. Nabors describes that the additional attributes/terms for the product can
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`be ranked based on how high a priority a particular attribute/term is to the
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`customer. See Nabors, 7:6-24. For example, Nabors describes a case in which “if
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`the customer does not particularly care whether the transmission is manual or
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`automatic, a low rank is assigned to that attribute.” Id. Any attribute/term with a
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`higher rank than another attribute/term would be “preferred,” as recited in the
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`claims of Willard. Tygar, 8.6.1.3.14.
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`As discussed in Section VI.A.3, supra, a POSITA would have been
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`motivated to combine the teachings of Tengel with those of Nabors and Walker I.
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`See Tygar, § 8.6.1.1 and 8.6.1.3.15.
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`Claim 1, Element A:
`See claim 1, preamble in Section VI.A.; Tygar, Exhibit B.
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`“The loan origination system accepts and stores into a database borrower
`attributes entered by a potential borrower requesting a loan, via the global
`communications network.” Tengel, Abstract.
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`“[A] consumer terminal, coupled to the global telecommunications network,
`accepts a first portion of borrower attributes entered by the potential borrower
`into the consumer terminal.” Tengel, 2:33-37.
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`“The weighting of loan attributes may include … a respective weighting factor
`that is selected by the potential borrower for each loan attribute.” Tengel, 3:5-9.
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`“[A] potential borrower in search of a loan enters a first portion of borrow
`attributes via a consumer terminal (step 206). The consumer terminal may be a
`PC that supports Internet Explorer or Netscape Navigator for access to the
`global telecommunications network 108.” Tengel, 8:31-40.
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`“This loan application form asks the potential borrower to enter various
`information about the borrower such as the loan product the borrower is applying
`for ... [T]he potential borrower then clicks on the ‘Submit’ icon 502 to send the
`application to the database 110 via the global network 108.” Tengel, 8:50-58.
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`“[E]ach of the weighting factors may be specified by the potential borrower
`depending on the importance of each of the loan attributes to the potential
`borrower.” Tengel, 9:51-54.
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`“The selected loan depends on which loan attributes are most important to the
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`potential borrower.” Tengel, 9:62-63.
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`Tengel, Figure 1.
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`Tengel, Figure 2A.
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`Tengel, Figure 4.
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`Tengel, Figure 5.
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`See Tengel, 3:1-9, 4:21-26, 4:34-35, 4:53-64, 8:31-40, 9:15-19, 9:49-54, 10:49-56,
`11:63-66; Figures 3A and 3B.
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`“At step 510, the buyer selects the subject of the goods he wants to purchase by
`selecting from a list of possible subjects. As shown in box 515, subjects might
`include airline tickets, hotel rooms, rental cars, insurance, mortgages, clothing,
`etc. After the subject is selected, a form is displayed on video monitor 430 of buyer
`interface 400.” Walker I, 16:3-8.
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`“Conditions may also be based on other conditions. For example, one condition
`might state that four out of five other specified conditions must be met.
`Alternatively, each condition of CPO 100 could be given a point value, with CPO
`100 requiring only that conditions be satisfied