Megan Berry et al.

Patent Trials and Appeals Board

Feb 22, 2022

2021003684 (P.T.A.B. Feb. 22, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/313,100 12/07/2011 Megan C. Berry 880417-0116-US00 4205 134795 7590 02/22/2022 MICHAEL BEST & FRIEDRICH LLP (DC) 790 N WATER ST SUITE 2500 MILWAUKEE, WI 53202 EXAMINER PRATT, EHRIN LARMONT ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 02/22/2022 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): DCipdocket@michaelbest.com ajheins@michaelbest.com nbenjamin@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MEGAN C. BERRY, JAMES FLUCKIGER, JAMES GOTTLIEB, ERIC ROSENBLATT, and ANGELA TSENG __________________ Appeal 2021-003684 Application 13/313,100 Technology Center 3600 ____________________ Before BRADLEY B. BAYAT, TARA L. HUTCHINGS, and ROBERT J. SILVERMAN, Administrative Patent Judges. BAYAT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the decision of the Examiner to reject claims 1, 3, 6, and 9-28, which constitute all pending claims.2 See Appeal Br. 2. We have jurisdiction under 35 U.S.C. § 6(b). A video hearing was held on January 31, 2022. We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42 (2022). The Appellant identifies Fannie Mae as the real party in interest. Appeal Br. 2. 2 Claims 2, 4, 5, 7, and 8 are canceled. Id. Appeal 2021-003684 Application 13/313,100 2 CLAIMED SUBJECT MATTER Claims 1, 9, 10, and 11 are independent. Claim 1, reproduced below with added bracketed notations, is representative of the subject matter on appeal. 1. A method for evaluating alterations to a subject property in real-time without additional human evaluations and appraisals, the method comprising: [(a)] electronically accessing, with an electronic processor, property data corresponding to an initial geographic area; [(b)] electronically performing, with the electronic processor, a regression based on the property data, the regression modeling a relationship between price and explanatory variables, the explanatory variables including property characteristics of properties included in the property data; [(c)] electronically performing, with the electronic processor, a first valuation of the subject property to determine an original value of the subject property based on results of the regression using a comparable selection model; [(d)] electronically generating, with the electronic processor, a first graphical user interface including property characteristics of the subject property; [(e)] electronically outputting, with the electronic processor, the first graphical user interface to a display device that displays the first graphical user interface; [(f)] electronically receiving, with the electronic processor, two electronic inputs, a first electronic input of the two electronic inputs alters one or more of the property characteristics of the subject property included in the first graphical user interface to provide one or more altered property characteristics for the subject property, and a second electronic input of the two electronic inputs defines a customized geographic area within the initial geographic area; [(g)] electronically accessing, with the electronic processor, an updated set of comparable properties based on the Appeal 2021-003684 Application 13/313,100 3 one or more altered property characteristics and the customized geographic area; [(h)] electronically performing, with the electronic processor, a second valuation to determine an updated value that is based on the updated set of comparable properties; [(i)] electronically determining, with the electronic processor, a ranked listing of comparable properties within the customized geographic area according to the one or more altered property characteristics and the results of the regression; [(j)] electronically generating, with the electronic processor, a second graphical user interface including at least one of the ranked listing of comparable properties within the customized geographic area, or cost estimates associated with the one or more altered property characteristics relative to a difference between the updated value and the original value; and [(k)] electronically outputting, with the electronic processor, the second graphical user interface to the display device that displays the second graphical user interface, wherein outputting the second graphical user interface is output in real-time and in response to electronically receiving the two electronic inputs, and wherein outputting the first graphical user interface is output in real-time and in response to electronically accessing the property data. Appeal Br. 26-27 (Claims App.). REJECTION The Examiner rejected claims 1, 3, 6, and 9-28 under 35 U.S.C. § 101 as directed to an abstract idea without significantly more. Final Act. 2-8. ANALYSIS Under 35 U.S.C. § 101, an invention is patent eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 Appeal 2021-003684 Application 13/313,100 4 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 78, 79). This is “a search for an ‘inventive concept’ - i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217-18 (alteration in original) (citation omitted). The USPTO has issued guidance about this framework. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). To determine if a claim is “directed to” an abstract idea, we evaluate whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas listed in the Revised Guidance (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes); and Appeal 2021-003684 Application 13/313,100 5 (2) additional elements that integrate the judicial exception into a practical application.3 Id. at 52-55. If a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, we consider whether the claim (3) provides an inventive concept such as by adding a limitation beyond a judicial exception that is not “well-understood, routine, conventional” in the field or (4) appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Revised Guidance, 84 Fed. Reg. at 56. The Appellant argues independent claims 1, 9, 10, and 11 as a group. See Appeal Br. 12-23. We select claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv) (2019). Under Prong One of Step 2A, the Examiner determines that claim 1 recites a process that under the broadest reasonable interpretation covers “certain methods of organizing human activity and mathematical concepts but for the recitation of generic computer components” and “the steps of ‘accessing’, ‘receiving’, and ‘determining’ in the context of this claim encompasses activities a user may perform when evaluating alterations to a subject property which is [a] concept that includes fundamental economic principles or practices (including hedging, insurance, mitigating risk).” Final Act. 3-4. The Examiner also determines “the steps of ‘performing’ in the context of this claim encompass an act of calculating using mathematical 3 “A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Revised Guidance, 84 Fed. Reg. at 54. Appeal 2021-003684 Application 13/313,100 6 methods to determine a variable (i.e., performing an arithmetic operation such as regression).” Id. at 4. Under Prong 2 of Step 2A, the Examiner determines the additional elements of claim 1, which include a generic “electronic processor,” a first and second “graphical user interface,” and a “display device,” fail to integrate the judicial exception into a practical application because they “represent using a computer as a tool to perform the abstract idea or mere instructions to implement the abstract idea on a computer.” Id. (citing Spec. ¶¶ 20, 36). Further, the Examiner determines that “the limitations of ‘a method for evaluating alterations to a subject property in real-time without additional human evaluations and appraisals’, ‘electronically’ and ‘electronic’ can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the particular technological environment or field of use.” Id. at 4-5. And, the Examiner determines that the additional limitations of “generating” and “outputting” with the electronic processor “all add insignificant extra solution activity to the judicial exception” (id. at 5) and the claim does not purport to improve the functioning of a computer, any other technology or technical field. Id. at 6. Under Step 2B, the Examiner re-evaluates the additional elements and finds that they are insufficient to amount to significantly more than the judicial exception because “[t]he use of generic computer components to implement the abstract idea does not provide an inventive concept.” Id. In complying with the Berkheimer4 memo, the Examiner cites the Federal 4 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) United States Patent and Trademark Office (April 19, 2018) Appeal 2021-003684 Application 13/313,100 7 Circuit’s decisions in Symantec, 5 TLI, 6 and OIP Techs7 and finds that the “generating” and “outputting” steps of claim 1 represent well-understood, routine, and conventional activity because they “remain insignificant extra- solution activity even upon reconsideration, and do not amount to significantly more.” Id. at 7 (The Examiner also finds that even when considered in combination, these additional elements cannot provide an inventive concept.) The Appellant argues that a prima facie case under section 101 has not been established because the Examiner failed to: (i) “properly interpret and explain why each specific limitation recited in the claim falls within one of the enumerated groupings of abstract ideas” (Appeal Br. 13 (emphasis omitted)), (ii) “look at the claim as a whole to evaluate whether the judicial exception is integrated into a practical application” (id. at 16), and (iii) “provide the written evidence required by the Berkheimer Memorandum that Claim 1 includes features that are ‘well-understood, routine, and conventional’” (id. at 20) (emphasis omitted). See also Reply Br. 5-12. We are not persuaded by the Appellant’s argument that the Examiner has failed to establish a prima facie case of patent ineligibility. Contrary to the Appellant’s argument, the Examiner identified the steps of claim 1 that describe activities for evaluating alterations to a subject property and available at https://www.uspto.gov/sites/default/files/documents/memo- berkheimer-20180419.PDF 5 Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016). 6 In re TLI Communications LLC Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016). 7 OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015). Appeal 2021-003684 Application 13/313,100 8 explained which of those limitations correspond to Certain Methods of Organizing Human Activity (fundamental economic principles or practice including hedging, insurance, and mitigating risk) and Mathematical Concepts groupings. See Final Act. 3-4; see also Ans. 4. Furthermore, “the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The Federal Circuit has held that the USPTO “satisfies its initial burden of production by ‘adequately explain[ing] the shortcomings it perceives so that the applicant is properly notified and able to respond.”’ In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting Hyatt, 492 F.3d at 1369-70). Therefore, to meet the notice requirement of 35 U.S.C. § 132, the Examiner is required to set forth the statutory basis of the rejection in a sufficiently articulate and informative manner. Id.; see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (“Section 132 is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.”). Here, the Examiner did precisely what section 132 requires and sufficiently articulated the basis for the rejection and thus established a prima facie case of patent ineligibility. We agree with the Examiner that claim 1 recites a combination of abstract ideas that correspond to certain methods of organizing human activities and mathematical concepts groupings. The steps recited in claim 1 calculate a first valuation for a property, alter the property characteristics (e.g., number of bedrooms or bathrooms, maintenance conditions, or addition of climate control system (Spec. ¶ 43)), and calculate a second Appeal 2021-003684 Application 13/313,100 9 valuation of the property to determine an updated value and generate the difference. In a parallel case, the Federal Circuit held that “[l]ike the risk hedging in Bilski and the concept of intermediated settlement in Alice, the concept of property valuation, that is, determining a property’s market value, is a ‘fundamental economic practice long prevalent in our system of commerce.’” In re Villena, 745 F. App’x 374, 379 (Fed. Cir. 2018) (nonprecedential) (citing Alice, 573 U.S. at 219). According to the court, “[p]rospective sellers and buyers have long valued property and doing so is necessary to the functioning of the residential real estate market.” Id. at 380. In disputing the Examiner’s characterization of the abstract idea, the Appellant argues that “claim 1 is not directed to home valuations.” Reply Br. 9. Rather, Appellant emphasizes that “Claim 1 is directed to home improvement valuations.” Id. We agree. Yet, home valuations based on an altered improvement to the property does not render the claim any less abstract. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea can generally be described at different levels of abstraction.”). Under Prong Two of Step 2A, we find the Examiner did consider the claim as a whole in evaluating whether the judicial exception is integrated into a practical application. The Examiner determined that claim 1 does “not involve improvements to the functioning of a computer, or to any other technology or technical field” (Final Act. 5) and does “not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.” Id. at 6; see also id. at 10. Appeal 2021-003684 Application 13/313,100 10 The Appellant argues that “[t]he technical problem is how to perform instant home improvement valuations without the need for additional human evaluations and appraisals.” Reply Br. 6. But, automation of manual processes does not improve computers. See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (automation of manual processes using generic computers to supplant and enhance a manual process is not ineligible for patenting); NetSoc, LLC v. Match Grp., LLC, 838 F. App’x 544, 548 (Fed. Cir. 2020) (automatically establishing a conventional social network that allows humans to exchange information and form relationships involves a method of organizing human activity); see also Alice, 573 U.S. at 225 (“Using a computer to create and maintain ‘shadow’ accounts amounts to electronic recordkeeping-one of the most basic functions of a computer.”); Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1316 (Fed. Cir. 2019) (“But the need to perform tasks automatically is not a unique technical problem.”). We disagree with the Appellant’s argument that outputting in real- time as recited in step (k) of claim 1 cannot be considered as extra-solution activity because it is “part of the actual solution activity.” Reply Br. 7. Rather, we find that the outputting step is merely presenting the result of the solution identified previously. Moreover, speed or efficiency increases from generic computers in “real-time” are not enough to confer patent eligibility. See Credit Acceptance, 859 F.3d at 1056-57 (using computers to perform routine tasks more quickly or more accurately is insufficient to make a claim patent eligible); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014) (using a computer to create electronic records, track multiple transactions, and automatically issue instructions is a form of “electronic Appeal 2021-003684 Application 13/313,100 11 recordkeeping” and using a computer to obtain data, adjust account balances, and automatically issue instructions does not improve the functioning of the computer itself); see also Customedia, 951 F.3d at 1364 (“‘[C]laiming the improved speed or efficiency inherent with applying the abstract idea on a computer’ [is] insufficient to render the claims patent eligible.” (citation omitted)); OIP, 788 F.3d at 1363 (“At best, the claims describe the automation of the fundamental economic concept of offer-based price optimization through the use of generic computer functions.”); Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012) (“[T]he claims merely employ computers to track, reconcile, and administer a life insurance policy with a stable value component-i.e., the computer simply performs more efficiently what could otherwise be accomplished manually.”; “[T]he computer merely permits one to manage a stable value protected life insurance policy more efficiently than one could mentally. Using a computer to accelerate an ineligible mental process does not make that process patent-eligible.”). We also are unpersuaded of error by the Appellant’s argument that While Symantec, TLI, and OIP Techs may find “receiving or transmitting data” to be “well-understood, routine, and conventional functions,” these court cases provide no evidence that the “generating” and “outputting” limitations of claim 1, when viewing claim 1 as a whole, are “well-understood, routine, and conventional functions,” especially in view of the other features recited in claim 1. Appeal Br. 21. This argument is not persuasive at least because the features that are part of the abstract idea in claim 1 cannot be considered under step two of the Alice framework, i.e., the additional elements of the claim are Appeal 2021-003684 Application 13/313,100 12 considered both individually and as an ordered combination to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application. Alice, 573 U.S. at 217; see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.”). In Symantec the Federal Circuit stated that “[t]he written description is particularly useful in determining what is well-known or conventional” (Symantec, 838 F.3d at 1317) and in TLI the court found the specification of the patent at issue described the additional elements as “either performing basic computer functions such as sending and receiving data, or performing functions ‘known’ in the art.” TLI, 823 F.3d at 614. Here, each of the “generating” and “outputting” steps are recited in claim 1 as being performed by generic computer components, i.e., an “electronic processor,” which the Specification discloses “may be any conventional computing or electronic devices, such as personal computers, laptop personal computers, mobile phones, smart-phones, super-phones, tablet personal computers, personal digital organizers, and the like.” Spec. ¶ 20; see also id. ¶ 36 (“The computer system may be a conventional desktop computer, a network computer, a laptop personal computer, a handheld portable computer (e.g., tablet, PDA, cell phone) or any of various execution environments that will be readily apparent to the artisan.”). The graphical user interface further recited as displaying to the display device is disclosed as being “any interface suited for input and output of communication data, whether that communication is visual, auditory, electrical, transitive, or the like.” Spec. Appeal 2021-003684 Application 13/313,100 13 ¶ 36 (emphasis added). And, the recited display device itself may be any generic or conventional “light-emitting diode display, a liquid crystal display, an organic light-emitting diode display, a plasma display, and a cathode-ray display.” Id. ¶ 8. The Appellant does not point to anything in the Specification, nor do we find anything, that involves more than performance of well-understand, routine, and conventional activities previously known to the industry. As the court in TLI found, such generic computer components [are] insufficient to add an inventive concept to an otherwise abstract idea. Alice, 134 S. Ct. at 2360 (“Nearly every computer will include a ‘communications controller’ and a ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”); Content Extraction, 776 F.3d at 1345, 1348 (“storing information” into memory, and using a computer to “translate the shapes on a physical page into typeface characters,” insufficient confer patent eligibility); Mortg. Grader, 811 F.3d at 1324-25 (generic computer components such as an “interface,” “network,” and “database,” fail to satisfy the inventive concept requirement); Intellectual Ventures I, 792 F.3d at 1368 (a “database” and “a communication medium” “are all generic computer elements”); BuySAFE v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network-with no further specification-is not even arguably inventive.”). TLI, 823 F.3d at 614. Individually, these additional elements perform conventional functions known in the industry. No technical improvements are recited. As an ordered combination, the limitations recite no more than when they are considered individually. They recite result-oriented functions rather than technical improvements to computers or technology. See Ericsson Inc. v. TCL Communication Tech. Holdings Ltd., 955 F.3d 1317, 1328 (Fed. Cir. Appeal 2021-003684 Application 13/313,100 14 2020) (“Merely claiming ‘those functions in general terms, without limiting them to technical means for performing the functions that are arguably an advance,’ does not make a claim eligible at step one.”) (citations omitted)); SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167-68 (Fed. Cir. 2018) (to avoid patent ineligibility, a claim must have the specificity to transform it from one claiming only a result to one claiming a way of achieving the result); Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1343 (Fed. Cir. 2018) (software can make non-abstract improvements to computer technology but software-based inventions that do not pass § 101 muster fail because “they did not recite any assertedly inventive technology for improving computers as tools and/or because the elements of the asserted invention were so result-based that they amounted to patenting the patent- ineligible concept itself.”). “If a claim’s only ‘inventive concept’ is the application of an abstract idea using conventional and well-understood techniques, the claim has not been transformed into a patent-eligible application of an abstract idea.” BSG, 899 F.3d at 1290-91; see Bozeman Fin. LLC v. Fed. Reserve Bank of Atl., 955 F.3d 971, 980-81 (Fed. Cir. 2020) (using well-known computer components to collect and analyze data, present data, and send notifications recites a logical sequence with no inventive concept); SAP, 898 F.3d at 1169-70 (claims to already available databases and processors that perform already available basic functions to include generic parallel processing components that are not asserted to be inventive to carry out improved mathematical calculations amounts to reciting what is well- understood, routine, and conventional); Elec. Power Grp., LLC v. Alstom S. A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (claims to using off-the-shelf, Appeal 2021-003684 Application 13/313,100 15 conventional computer, network, and display technology to gather, send, and present desired information lack an inventive concept). As such, the recited physical components here behave exactly as expected according to their ordinary use and the recited steps do nothing more than describe what it means to apply the abstract idea on a generic computer. Accordingly, we sustain the rejection of claim 1 as directed to an abstract idea without significantly more, and independent claims 9, 10, and 11, which fall with claim 1. We also sustain the rejection of dependent claims 3, 6, and 12-28 for the same reasons because the Appellant has not argued these claims with any specificity. See Appeal Br. 23-24. DECISION SUMMARY Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1, 3, 6, 9-28 101 Eligibility 1, 3, 6, 9-28 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a) (2022). See 37 C.F.R. § 1.136(a)(1)(iv) (2022). AFFIRMED