Nathan Pieter. Den Herder et al.

Patent Trials and Appeals Board

Sep 26, 2019

13162819 - (D) (P.T.A.B. Sep. 26, 2019)

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.
13/162,819 06/17/2011 Nathan Pieter Den Herder 880417-0090-US00 8346
134795 7590 09/26/2019
MICHAEL BEST & FRIEDRICH LLP (DC)
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
WEISENFELD, ARYAN E
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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
sbjames@michaelbest.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NATHAN PIETER DEN HERDER, HAMILTON FOUT,
STEVEN L. PIERCE, ERIC ROSENBLATT, and JOHN D. TREADWELL
____________

Appeal 2018-000082
Application 13/162,819
Technology Center 3600
____________

Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
LARRY J. HUME, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–3, 6, 13–15, 18, 23–27, and 29–42, which are all the claims
pending in this application.1 Claims 4, 5, 7–12, 16, 17, 19–22, and 28 are
canceled. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b). An oral hearing was conducted on September 19, 2019.
We affirm.

1 The real party in interest is Fannie Mae, Assignee of the application. App.
Br. 2 (emphasis added).
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STATEMENT OF THE CASE 2
Introduction
Appellants’ claimed invention “relates generally to property valuation,
more particularly to valuation of properties proximate to specified
geographic features, and still more particularly to predicting values of
properties that border specified geographic features using a geographic
information system (GIS) and an automated valuation model (AVM).”
Spec. ¶ 1.
Rejections
A. Claims 1–3, 6, 13–15, 18, 23–27, and 29–42 are rejected under
35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more. Final Act. 2.
B. Claims 1, 13, 23–25, and 30 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being obvious over the teachings and suggestions of
Stinson (US 8,046,306 B2; October 25, 2011), hereinafter “Stinson,”
in view of “Value of Ocean Proximity on Barrier Island Houses,”
Appraisal Journal, Published April 1, 2000, hereinafter “Ocean
Proximity.”
C. Claims 2, 3, 6, 14, 15, 18, 26, 27, 29, 31–33, 35–37, and 39–41 are
rejected under pre-AIA 35 U.S.C. § 103(a) as being obvious over the
teachings and suggestions of Stinson, “Ocean Proximity,” in view of
Hartz, Jr. et al. (US 6,636,803 B1; Oct. 21, 2003), hereinafter “Hartz.”

2 We herein refer to the Final Office Action, mailed January 13, 2017 (“Final
Act.”); Appeal Brief, filed June 7, 2017 (“App. Br.”); Examiner’s Answer,
mailed August 1, 2017 (“Ans.”), and the Reply Brief, filed Sept. 29, 2017
(“Reply Br.”).
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D. Claims 34, 38, and 42 are rejected under pre-AIA 35 U.S.C. § 103(a)
as being obvious over the teachings and suggestions of Stinson,
“Ocean Proximity,” in view of Humphries et al. (US 8,140,421 B1;
Mar. 20, 2012), hereinafter “Humphries.”

Issues on Appeal
1. Did the Examiner err in concluding that claims 1–3, 6, 13–15, 18, 23–
27, and 29–42 are directed to a judicial exception, without
significantly more, under 35 U.S.C. § 101?
2. Did the Examiner err in concluding that claims 1–3, 6, 13–15, 18, 23–
27, and 29–42 are obvious over the cited combinations of references
under pre-AIA 35 U.S.C. § 103(a)?

ANALYSIS
We reproduce representative independent claim 1 in Table One, infra.
We have considered all of Appellants’ arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(1)(iv).

Rejection under 35 U.S.C. § 101 of
Claims 1–3, 6, 13–15, 18, 23–27, and 29–42

Issue: Under 35 U.S.C. § 101, did the Examiner err by rejecting
claims 1–3, 6, 13–15, 18, 23–27, and 29–42, as being directed to a judicial
exception, without significantly more?
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Principles of Law — 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.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “‘[L]aws of nature, natural phenomena, and abstract
ideas’ are not patentable.” Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (quoting Diamond v. Diehr, 450 U.S. 175, 185
(1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18
(2014) (citing Mayo, 566 U.S. at 75–77). In accordance with that
framework, we first determine what concept the claim is “directed to.” See
Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.” (emphasis omitted)); see also Bilski v. Kappos, 561 U.S.
593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the
basic concept of hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding of rubber products” (Diehr, 450 U.S. at 193); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
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(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68
(1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane
v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.

Subject Matter Eligibility — 2019 Revised Guidance
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). This
new guidance is applied in this Opinion. Under the 2019 Revised Guidance,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, mental processes,
or certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people);3 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).4, 5
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See 2019

3 Referred to as “Step 2A, Prong One” in the Revised Guidance (hereinafter
“Step 2A, prong 1”).
4 Referred to as “Step 2A, Prong Two” in the Revised Guidance (hereinafter
“Step 2A, prong 2”).
5 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. Id.
Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18.
For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.6
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Because there is no single definition of an “abstract idea” under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the “abstract idea” exception includes the
following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes— concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,

6 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See 2019 Revised Guidance, 84 Fed. Reg. at 52.
According to the 2019 Revised Guidance, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular
article to a different state or thing — see MPEP
§ 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological
environment, such that the claim as a whole is more than
a drafting effort designed to monopolize the exception
— see MPEP § 2106.05(e).
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In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).

2019 Revised Guidance, Step 2A, Prong One7
The Judicial Exception
Under the 2019 Revised Guidance, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.
We note the Examiner concludes all claims 1–3, 6, 13–15, 18, 23–27,
and 29–42 recite an abstract idea, i.e., estimating property value, including
collecting and comparing known information, comparing new and stored
information, and using rules to identify options,. Final Act. 4.

7 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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TABLE ONE
In the table below, we identify in italics the specific claim limitations
that we conclude recite an abstract idea. We additionally identify in bold
the additional (non-abstract) claim limitations that are generic computer
components:
Independent Claim 1 Revised 2019 Guidance
[a] A method for estimating
property value, the method
comprising:

A process (method) is a statutory
subject matter class. See 35 U.S.C.
§ 101 (“Whoever invents or
discovers any new and useful
process, machine, manufacture, or
composition of matter, or any new
and useful improvement thereof,
may obtain a patent therefor, subject
to the conditions and requirements of
this title.”).

[b] accessing, by a
processing unit, property
data describing a plurality of
properties in a
geographic area;, comprising:
accessing information is insignificant
extra-solution activity. 2019
Revised Guidance, 55 n.31; see also
MPEP § 2106.05(g).

[c] identifying, by the processing
unit, two or more geographic
features within the geographic
area;
Abstract idea, i.e., “identifying”
could be performed alternatively as a
mental process. See 2019 Rev. Guid.
52.

[d] comparing each location
of each property of the
plurality of properties to each
location of the two or more
geographic features to
automatically determine two
or more distances and
Abstract idea, i.e., “comparing”
could be performed alternatively as a
mental process. See 2019 Rev. Guid.
52.

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Independent Claim 1 Revised 2019 Guidance
whether the each property of
the plurality of properties
borders the two or more
geographic features;

[e] assigning a first categorical
value to the each property of the
plurality of properties that borders
the two or more geographic
features;
Abstract idea, i.e., “assigning” could
be performed alternatively as a
mental process. See 2019 Rev. Guid.
52.

[f] assigning a second categorical
value to the each property of the
plurality of properties that
does not border the two or more
geographic features;

Abstract idea, i.e., “assigning” could
be performed alternatively as a
mental process. See 2019 Rev. Guid.
52.

[g] performing, by the
processing unit, a hedonic
regression based upon the
property data,
wherein the hedonic
regression models a
relationship between a price
and explanatory variables
including a first explanatory
variable and a second
explanatory variable, where:

Abstract idea, i.e., “performing”
could be done as a mental process.
See 2019 Rev. Guid. 52.

We additionally note “a hedonic
regression” is a mathematical
concept — also a type of abstract
idea.
[h] the first explanatory
variable is a binary variable
that includes only the first
categorical value or the
second categorical value for
the each property of the
plurality of properties based
on whether the first
Insignificant extra-solution activity.
See 2019 Revised Guidance, 55 n.31;
see also MPEP § 2106.05(g).
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Independent Claim 1 Revised 2019 Guidance
categorical value or the
second categorical value is
assigned to the each property
of the plurality of properties,
and

[i] the second explanatory
variable is a distance
proximity variable that
identifies a proximity to the
two or more geographic
features for the each property
of the plurality of properties
based on the two or more
distances determined for the
each property of the
plurality of properties;

Insignificant extra-solution activity.
See 2019 Revised Guidance, 55 n.31;
see also MPEP § 2106.05(g).

[j] identifying a subject
property;

Abstract idea, i.e., “identifying”
could be performed alternatively as a
mental process. See 2019 Rev. Guid.
52.

[k] automatically 8
determining, by the
Abstract idea, i.e., “determining”
could be performed alternatively as a

8 “Automation” or any increase in processing speed in the claimed method
(as compared to without using computers) comes from the capabilities of the
generic computer components, and not the recited process itself. See
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (citing Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d
1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”)); see also Intellectual
Ventures I LLC v. Erie Indemnity Co., 711 F. App'x 1012, 1017 (Fed. Cir.
2017) (unpublished) (“Though the claims purport to accelerate the process
of finding errant files and to reduce error, we have held that speed and
accuracy increases stemming from the ordinary capabilities of a general-
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Independent Claim 1 Revised 2019 Guidance
processing unit, a set of
value adjustments based upon
the hedonic regression and
differences in the explanatory
variables between the subject
property and each property of
a plurality of comparable
properties, the set of value
adjustments including

mental process. See 2019 Rev. Guid.
52.

[l] a first adjustment
depending upon whether the
subject property and the
plurality of comparable
properties border the two or
more geographic features,
and

Abstract idea, i.e., “the first
adjustment” could be performed
alternatively as a mental process.
See 2019 Rev. Guid. 52.

[m] a second adjustment
depending upon distances
that the subject property and
the plurality of comparable
properties are from the two or
more geographic features;
and

Abstract idea, i.e., “the second
adjustment” could be performed
alternatively as a mental process.
See 2019 Rev. Guid. 52.

[n] estimating, by the
processing unit, a value of
the subject property using the
set of value adjustments.
Abstract idea, i.e., “estimating a
value of the subject property” could
be performed alternatively as a
mental process. See 2019 Rev. Guid.
52.

purpose computer ‘do[ ] not materially alter the patent eligibility of the
claimed subject matter.’”).
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Abstract Ideas — Mental Processes
We conclude the italicized abstract idea steps identified above in
Table One could be performed alternatively as mental processes under the
Revised Guidance. See Claim 1. See 2019 Revised Guidance, 84 Fed. Reg.
at 52. Remaining independent claims 13 and 25 recite similar language of
commensurate scope that we conclude also falls into the same abstract idea
category of mental processes, as mapped above for independent claim 1.
See supra Table One.
If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under § 101. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1372–73 (Fed. Cir. 2011); “That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.” CyberSource, 654
F.3d at 1375. See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146–47 (Fed. Cir. 2016).
Moreover, “[u]sing a computer to accelerate an ineligible mental
process does not make that process patent-eligible.” Bancorp, 687 F.3d at
1279; see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015) (“relying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible.”).
Appellants urged during the Oral Hearing that the “processor” or
“processing unit” limitations precluded the claims on appeal from being
performed alternatively as a mental process. However, it is well settled, that
whether a recited device is a tangible system or, in 35 U.S.C. § 101 terms, a
“machine,” is not dispositive. ChargePoint, Inc. v. SemaConnect, Inc., 920
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F.3d 759, 770 (Fed. Cir. 2019) (quoting In re TLI Commc’ns, 823 F.3d 607,
611 (Fed. Cir. 2016) (“[N]ot every claim that recites concrete, tangible
components escapes the reach of the abstract-idea inquiry.”). For a machine
to impose a meaningful limit on the claimed invention, it must play a
significant part in permitting a claimed method to be performed, rather than
function solely as an obvious mechanism for permitting a solution to be
achieved more quickly. Versata Dev. Grp. v. SAP America, Inc., 793 F.3d
1306, 1335 (Fed. Cir. 2015); see also MPEP § 2106.05(b)(II) (citing
Versata).

Additional Limitations
As emphasized in bold supra, we note the additional non-abstract
limitations of generic computer components. The “processing unit” is the
additional non-abstract limitation recited in independent claim 1. Similarly,
independent claim 13 recites “an electronic processor,” and independent
claim 25 recites “an apparatus” comprising, inter alia, “a processor” and “a
memory.”
See 2019 Revised Guidance, 84 Fed. Reg. at 52. We also note the
supporting description of generic computer and network components in the
Specification, for example:
The present invention can be embodied in various forms,
including business processes, computer implemented methods,
computer program products, computer systems and networks,
user interfaces, application programming interfaces, and the
like.
Spec. ¶ 10.
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We emphasize that McRO, Inc. v. Bandai Namco Games America
Inc., (837 F.3d 1299 (Fed. Cir. 2016)), guides: “[t]he abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added).
Because we conclude all claims on appeal recite an abstract idea, as
identified above, under Step 2A, Prong One, we proceed to Step 2A, Prong
Two.
2019 Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the 2019 Revised Guidance, we consider whether there
are additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Revised Guidance, 84 Fed.
Reg. at 54–55.
MPEP § 2106.05(a)
Improvements to the Functioning of a Computer or
to Any Other Technology or Technical Field

McRO
In view of McRO, Appellants contend “the pending claims are not
directed to an abstract idea, and satisfy the first prong of the Alice test
because the pending claims are limited to a specific process or a specific
structure for estimating property value using particular information and
techniques.” App. Br. 29. In support, Appellants analogize particular claim
elements in McRO to limitations in the claims on appeal (in brackets), as
follows:
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the claims at issue in [McRO], are “a combined order of specific
rules that renders information [e.g., property data describing a
plurality of properties in a geographic area] into a specific
format [e.g., a set of value adjustments] that is then used and
applied to create desired results [e.g., estimating a value of a
subject property].”
App. Br. 33.
We find Appellants’ arguments based upon McRO are unavailing
because we conclude Appellants’ claims are unlike the subject claim(s)
considered by the court in McRO.9 The patent at issue in McRO describes
that prior character animation and lip synchronization were accomplished by
human animators, with the assistance of a computer, which involved the use
of a so-called “keyframe” approach in which animators set appropriate
parameters, i.e., morph weights, at certain important times, i.e., in order to
produce accurate and realistic lip synchronization and facial expressions.
McRO, 837 F.3d at 1305. Animators knew what phoneme a character
pronounced at a given time from a time-aligned phonetic transcription (a
“timed transcript”). Id.
In accordance with the prior technique, animators, using a computer,
thus, manually determined the appropriate morph weight sets for each
keyframe based on the phoneme timings in the timed transcript. Id. See
also SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018)
(distinguishing McRO):
The claims in McRO were directed to the creation of something
physical—namely, the display of “lip synchronization and
facial expressions” of animated characters on screens for
viewing by human eyes. Id. at 1313. The claimed improvement
was to how the physical display operated (to produce better

9 Appellants are referring to McRO, 837 F.3d 1299.
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quality images), unlike (what is present here) a claimed
improvement in a mathematical technique with no improved
display mechanism. The claims in McRO thus were not abstract
in the sense that is dispositive here. And those claims also
avoided being “abstract” in another sense reflected repeatedly
in our cases (based on a contrast not with “physical” but with
“concrete”): they had the specificity required to transform a
claim from one claiming only a result to one claiming a way of
achieving it.
SAP, 898 F.3d at 1167 (emphasis added).
In contrast to the claimed invention in McRO that improved how a
physical display operated to produce better quality images (id.), claim 1
merely uses a generic “processing unit” to perform the recited steps that
result in the final step of “estimating, by the processing unit, a value of the
subject property using the set of value adjustments.”
Dependent claim 34 depends directly from claim 1 and further recites
“responsive to estimating the value of the subject property using the set of
value adjustments, displaying a map image and a property data grid on a
display screen wherein the map image includes the subject property and the
plurality of comparable properties.” (emphasis added).
However, it is our view that “merely displaying a map image and a
property data grid on a display screen” (claim 34), without more, does not
improve the operation of a physical display, as was the case in McRO, nor
the operation of any other computer component, such as the generic
“processing unit” recited in claim 1. See SAP, 898 F.3d at 1167. Moreover,
we conclude Appellants’ generic computer “processing unit”
implementation in method claim 1 performs steps that can be performed
alternatively as mental processes, as discussed above.
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We see nothing in Appellants’ claims that specifically improves the
efficiency of the “processing unit” (i.e., computer), display screen, or
another technology or technical field, because Appellants’ claims, at best,
merely improve the abstract idea of “automatically determining, by the
processing unit, a set of value adjustments based upon the hedonic
regression and differences in the explanatory variables between the subject
property and each property of a plurality of comparable properties” as part
of a method of “estimating, by the processing unit, a value of the subject
property using the set of value adjustments.” Claim 1.
Accordingly, on this record, we conclude representative claim 1 does
not recite an improvement to the functionality of a computer or other
technology or technical field. See MPEP § 2106.05(a).

MPEP §§ 2106.05(b) and (c)
The Bilski Machine-or-Transformation test (“MoT”)
as applied to method claims 41 and 42

At the outset, we note the Supreme Court cautions that the MoT test is
not the sole test, but may provide a useful clue:
This Court’s precedents establish that the machine-or-
transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed
inventions are processes under § 101. The machine-or-
transformation test is not the sole test for deciding whether an
invention is a patent-eligible “process.”

Bilski, 561 U.S. at 604 (emphasis added).
Because a generic “processing unit” is recited in method claim 1, we
conclude method claims 1–3, 6, 23, and 31–34 do not define or rely upon a
“particular machine.” See MPEP § 2106.05(b). Further, we conclude
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method claims 1–3, 6, 23, and 31–34 do not transform an article to a
different state or thing. See MPEP § 2106.05(c).
To the extent that Appellants argued during the Oral Hearing that the
method claims on appeal provide a patentable transformation of data, we
disagree.
The “[t]ransformation and reduction of an article ‘to a different state
or thing’ is the clue to the patentability of a process claim that does not
include particular machines.” Gottschalk v. Benson, 409 U.S. at 70.
“The mere manipulation or reorganization of data, however, does not satisfy
the transformation prong.” CyberSource, 654 F.3d at 1375.
Therefore, we conclude method claim 1 fails to satisfy the
transformation prong of the machine-or-transformation test. Thus, without
more, we conclude method claims 1–3, 6, 23, and 31–34 do not use a
“particular machine” to apply the judicial exception (see MPEP §
2106.05(b)), or perform a transformation of an article to a different state or
thing (see MPEP § 2106.05(c)).

MPEP § 2106.05(e) — Meaningful Claim Limitations 10
The Examiner finds the claims on appeal:
do not offer “significantly more” than the abstract idea itself
because the claims do not recite an improvement to another
technology or technical field, an improvement to the
functioning of any computer itself, or provide meaningful

10 MPEP § 2106.05(e): “Applying or using the judicial exception in some
other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that the claim as a
whole is more than a drafting effort designed to monopolize the exception.”
(emphasis added).

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limitations beyond generally linking an abstract idea
(estimating property value) to a particular technological
environment (a general purpose computer).
Final Act. 6 (emphasis added).
Appellants do not advance substantive arguments to any particular
“meaningful” claim limitations, such as those of the types addressed under
MPEP § 2106.05(e). Accordingly, on this record, we conclude independent
method claim 1 has no other argued meaningful limitations, as considered
under section 2106.05(e) of the MPEP, under the 2019 Revised Guidance.

MPEP § 2106.05(f)
Merely including instructions to implement
an abstract idea on a computer, or
Merely using a computer as a tool
to perform an abstract idea

As mapped in the right column of Table One, supra, we note claim 1
recites the additional non-abstract limitation of a generic “processing unit.”
Similarly, independent claim 13 recites “an electronic processor,” and
independent claim 25 recites “an apparatus” comprising, inter alia, “a
processor” and “a memory.”
Without more, we agree with the Examiner that Appellants’ claimed
invention merely implements the abstract idea(s) using generic computer
components, as depicted in bold type in Table One, supra. See Claim 1;
Final Act. 7. Therefore, we are of the view that Appellants’ claims merely
use a generic computer as a tool to perform an abstract idea.

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MPEP § 2106.05(g)
Adding insignificant extra-solution activity
to the judicial exception

As mapped in the right column of Table One, supra, we conclude
claim 1 recites extra or post-solution activities that courts have determined to
be insufficient to transform judicially excepted subject matter into a patent-
eligible application. See MPEP § 2106.05(g); 84 Fed. Reg. at 55 n.31.

MPEP § 2106.05(h)
Generally linking the use of the judicial exception to a particular
technological environment or field of use

The Supreme Court guides: “the prohibition against patenting abstract
ideas ‘cannot be circumvented by attempting to limit the use of the formula
to a particular technological environment’ or [by] adding ‘insignificant post
solution activity.’” Bilski v. Kappos, 130 S. Ct. 3218 (2010), (quoting
Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
Appellants contend: “the pending claims are limited to a specific
process or a specific structure for estimating property value using particular
information and techniques, and the pending claims do not preempt
approaches for estimating property value that use a different structure or
different techniques.” App. Br. 29 (emphasis added).
In response, we note that preemption is not the sole test for patent
eligibility. As our reviewing court has explained, “questions on preemption
are inherent in and resolved by the § 101 analysis,” and, although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
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cf. OIP Techs, 788 F.3d at 1362–63 (“[T]hat the claims do not preempt all
price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.”).
Nor do claims 1–3, 6, 13–15, 18, 23–27, and 29–42 on appeal present
any other issues as set forth in the 2019 Revised Guidance regarding a
determination of whether the additional generic elements integrate the
judicial exception into a practical application. See Revised Guidance, 84
Fed. Reg. at 55.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1–3, 6, 13–15, 18, 23–27, and 29–42 do not
integrate the judicial exception into a practical application. Therefore,
we proceed to Step 2B, The Inventive Concept.

The Inventive Concept – Step 2B
Under the 2019 Revised Guidance, only if a claim: (1) recites a
judicial exception, and (2) does not integrate that exception into a practical
application, do we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
We note the Examiner finds:
the claimed invention is directed towards the abstract idea of
estimating property value and merely utilizing generic
computing devices (see applicant[s’] specification at Page 15,
paragraph [0084] which explicitly states that the invention is
carried out on any conventional computing device) in order to
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perform the well-understood, routine, and conventional
activities known in the field of estimating property value.
Final Act. 42 (emphasis added).
We emphasize the Examiner’s finding is supported by a citation to the
Specification, paragraph 84, as evidence. We additionally note Appellants
have not traversed the Examiner’s specific finding (id.) in the Appeal Brief
or the Reply Brief. Nor did Appellants substantively and persuasively
traverse the Examiner’s findings regarding paragraph 84 of the Specification
during the Oral Hearing, when this issue was discussed.
BASCOM 11
Appellants cite to BASCOM in support, and urge:
even assuming, in arguendo, that the pending claims are
directed to an abstract idea, which the Examiner has yet to
properly identify, Appellant submits that, similar to Bascom,
the pending claims have an inventive concept that can be found
in the ordered combination of claim limitations that transforms
the abstract idea into a particular, practical application of that
abstract idea.
App. Br. 33.
We find Appellants’ analogy to BASCOM unavailing. Id. The Federal
Circuit held in BASCOM that the claimed Internet content filtering, which
featured an implementation “versatile enough that it could be adapted to
many different users’ preferences while also installed remotely in a single
location,” expressed an inventive concept in “the non-conventional and non-
generic arrangement of known, conventional pieces.” BASCOM, 827 F.3d at
1350.

11 See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
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Here, Appellants have not shown a non-conventional, non-generic
arrangement regarding the non-abstract limitations of generic computer
components. See independent claim 1. See 2019 Revised Guidance, 84 Fed.
Reg. at 52.
Therefore, it is our view that Appellants’ claims do not involve any
improvements to another technology, technical field, or improvements to the
functioning of the computer or network, as was seen by the court in
BASCOM. Instead, we conclude Appellants’ claims merely invoke generic
computer components as a tool in which the instructions executing on the
computer apply the judicial exception.
Further, regarding the use of the recited generic “processing unit”
identified above in Table One, the Supreme Court has held “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Alice, 573 U.S. at 223. Our reviewing
court provides additional guidance: See FairWarning, 839 F.3d at 1096
(“[T]he use of generic computer elements like a microprocessor or user
interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter.”); OIP Techs, 788 F.3d at 1363 (claims reciting, inter
alia, sending messages over a network, gathering statistics, using a
computerized system to automatically determine an estimated outcome, and
presenting offers to potential customers found to merely recite “‘well-
understood, routine conventional activit[ies],’ either by requiring
conventional computer activities or routine data-gathering steps” (alteration
in original)).
This reasoning is applicable here. Therefore, on the record before us,
Appellants have not shown that the claims on appeal add a specific
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limitation beyond the judicial exception that is not “well-understood,
routine, and conventional” in the field (see MPEP § 2106.05(d)).
In light of the foregoing, we conclude, under the 2019 Revised
Guidance, that each of Appellants’ claims, considered as a whole, is directed
to a patent-ineligible abstract idea that is not integrated into a practical
application, and does not include an inventive concept.
Accordingly, for the reasons discussed above, we sustain the
Examiner’s Rejection under 35 U.S.C. § 101 of claims 1–3, 6, 13–15, 18,
23–27, and 29–42.12

Rejection B
of Claims 1, 13, 23–25, and 30
under 35 U.S.C. § 103(a)

Regarding Rejection B, the Examiner finds the combination of
Stinson and “Ocean Proximity” teaches or suggests all limitations of claims
1, 13, 23–25, and 30. See Final Act. 8–17.

Combinability of the Cited References under 35 U.S.C. § 103(a)
As a threshold combinability issue, Appellants urge that the Examiner
has not established a rational underpinning to modify Stinson with the
teachings and suggestions of “Ocean Proximity.” In support, Appellants cite
to In re Hedges (783 F.2d 1038 (Fed. Cir. 1986)) and contend:
Contrary to the Examiner's reasoning, a person having ordinary
skill in the art at the time of the invention would not find it

12 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(1)(iv).

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obvious to “[a]dd an additional variable to an already
established and well-known regression” because proceeding
contrary to accepted wisdom in the art is evidence of
nonobviousness. (Emphasis added). Therefore, the reasoning
provided by the Examiner lacks rational underpinning because
the evidence is of nonobviousness, and represents a clear error.
App. Br. 11.
We find Appellants’ argument unavailing, because we find the
addition of an additional variable would have produce nothing more than a
predictable result. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 401
(2007) (“[A] combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”).
In further support of the argument that the Examiner has not provided
a rational underpinning to combine the references, Appellants argue the
Examiner has relied upon impermissible hindsight. Id.
However, Appellants do not provide any evidence sufficient to
demonstrate that combining the teachings of the cited references in the
manner proffered by the Examiner (Final Act. 7–27), would have been
“uniquely challenging or difficult for one of ordinary skill in the art,”
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007), nor have Appellants provided any objective evidence of secondary
considerations, which our reviewing court guides “operates as a beneficial
check on hindsight,” Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys.,
Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
The Examiner sets forth a reason explaining why an artisan would
have modified Stinson with the teachings and suggestions of “Ocean
Proximity:”
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[I]t would have been obvious to modify the method of Stinson
to include the above-mentioned limitations of OceanProximity
because, as stated above, the purpose of Stinson is to provide an
accurate alternate method for valuation of a property based on
specific variables, and Ocean Proximity, as supported by Page
2, paragraph [0001] is also providing an alternate method for
valuation. The only difference in the two references is that
Stinson deals with variables such as condition, quality, and
location, whereas OceanProximity deals with the variable of
proximity to the beach and ocean. Both serve the same purpose
of providing an alternate method for valuation for given
properties, and it would be beneficial to add proximity to the
ocean as a variable and a variable indicating whether the
property actually bordered the ocean to Stinson because it
would broaden the application of Stinson to houses on beach
fronts.
This way, as stated on Page 2, paragraph [0001] of
OceanProximity, the appraisal system of Stinson can be
beneficial to real estate agents, bank appraisers, and tax
assessors that are evaluating the value of beachfront properties.
As a point of clarification, OceanProximity is analogous art
because it deals with providing a regression analysis modeling
the relationship between price and explanatory variables.

Therefore, it would have been obvious to person having
ordinary skill in the art at the time of the invention to modify
the method of Stinson to include the above-mentioned
limitations of OceanProximity because it will expand the
potential use of the appraisal system of Stinson to real estate
agents, bank appraisers, and tax assessors that are evaluating
the value of beachfront properties.
Final Act. 15–16.
We find the Examiner has set forth sufficient “articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). See also 35
U.S.C. § 132(a). Moreover, our reviewing court guides that the reason(s) or
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motivation(s) to combine the references may often suggest what the inventor
has done, but for a different purpose or to solve a different problem. It is not
necessary that the prior art suggest the combination to achieve the same
advantage or result discovered by Appellant. See In re Kahn, 441 F.3d 977,
987 (Fed. Cir. 2006) (motivation question arises in the context of the general
problem confronting the inventor rather than the specific problem solved by
the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc.,
424 F.3d 1293, 1323 (Fed. Cir. 2005) (“One of ordinary skill in the art need
not see the identical problem addressed in a prior art reference to be
motivated to apply its teachings.”).
Accordingly, on this record, we do not agree with Appellants that the
Examiner has not provided sufficient “articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.”
Kahn, 441 F.3d at 988.

Contested Limitations under 35 U.S.C. § 103(a)
Rejection B of Independent claims 1, 13, and 25
Regarding independent claims 1, 13, and 25, rejected under § 103
Rejections B, Appellants merely recite the claim language, and alleges such
language is not taught or suggested by the combinations of prior art cited by
the Examiner. See Generally App. Br. 8–16.
However, Appellants fail to advance persuasive, substantive
arguments which compare and distinguish the disputed claim limitations
from the combined teachings and suggestions of the cited references, as
found by the Examiner. See 37 C.F.R. § 41.37(c)(1)(iv) (“A statement
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which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim.”).
We are not persuaded of Examiner error based on Appellants’ other
arguments because Appellants do not provide persuasive argument or
evidence to support the assertions. It is well settled that mere attorney
arguments and conclusory statements, which are unsupported by factual
evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (attorney argument is not evidence).
To the extent that Appellants argue: “identifying two or more
geographic features within the geographic area” and “comparing each
location of each property of the plurality of properties to each location of the
two or more geographic features to automatically determine two or more
distances and whether the each property of the plurality of properties borders
the two or more geographic features” (as recited in each independent claim)
are not taught by the combination of Stinson and “Ocean Proximity, we note
Appellants support this limitation argument only by arguing: (1)
“Modification of an established and well-known regression is evidence of
nonobviousness,” and (2) “The Examiner's modification of an established
and well-known regression uses impermissible hindsight.” We have fully
addressed these arguments supra.
Therefore, on this record, we find a preponderance of the evidence
supports the Examiner’s underlying factual findings and ultimate legal
conclusion of obviousness for Rejection B of independent claims 1, 13,
and 25, and we sustain the rejection.
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Rejection B of Claims 23, 24, and 30
under 35 U.S.C. § 103(a)

Further regarding Rejection B, Appellants argue dependent claims 23,
24, and 30 together as a group. Using our authority under 37 C.F.R.
§ 41.37(c)(1)(iv), we select claim 23 as being representative of this group.

Appellants argue:
In particular, the combination of Stinson and Ocean Proximity
is devoid of any disclosure or suggestion of “identifying two or
more geographic features within the geographic area [and]
comparing each location of each property of the plurality of
properties to each location of the two or more geographic
features to automatically determine two or more distances and
whether the each property of the plurality of properties borders
the two or more geographic features,” as claimed by Appellant.
App. Br. 17 (emphasis added).
We note that these argued limitations are recited in independent
claims 1, 13, and 25, and not in claims 23, 24, and 30, which depend directly
from claims 1, 13, and 25, respectively. The Examiner finds the
combination of Stinson, “Ocean Proximity” and Hartz teaches or suggests all
limitations of claims 23, 24, and 30. For claims 23, 24, and 30, the
Examiner focuses on “Ocean Proximity” as evidence in support of the
rejection:
Regarding claims 23, 24, and 30, the combination of Stinson
and OceanProximity make obvious the method, computer
program product, and apparatus of claims 1, 13, and 25.
OceanProximity further teaches wherein the distance proximity
variable is distance in miles from the two or more geographic
features (Page 7, paragraph [0003] teaches that prior studies
using hedonic regressions measured distance in miles, as
opposed to feet, as used in OceanProximity. Further note that
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the rejection for claims 1, 13, and 25 discuss why it would be
obvious to modify the combination of references to include two
or more geographic features).
See Final Act. 17.
Appellants respond:
The Examiner asserted that page 7, paragraph [0003] of
Stinson teaches that prior studies using hedonic regressions
measured distance in miles, as opposed to feet, as used in
Ocean Proximity, and referred to the legal conclusion of
obviousness of claims 1, 13, and 25. (see Office Action pg. 17).
Appellant disagrees because the Examiner has failed to
provide any articulated reasoning with rational underpinning to
support the legal conclusion of obviousness. Indeed, the
Examiner merely summarizes the opposition between Stinson
and Ocean Proximity and further notes the erroneous reasoning
to modify the combination of references to include two or more
geographic features.
However, the opposition between Stinson and Ocean
Proximity weighs in the favor of nonobviousness. Indeed, the
use of feet as a measurement in Ocean Proximity supports the
interpretation of proximity to a single geographic feature, i.e.,
proximity to an ocean. (Emphasis added.)
App. Br. 18.
Turning to the evidence, “Ocean Proximity” describes:
The results here add to the literature on hedonic regressions for
single-family residential real estate. Prior studies included
scenic views and distance to the beach from inland locations.
The latter was measured in miles. This study looks at the
effect of price on identical residences, one of which is one
house closer to the beach. The difference is substantial. While
beach frontage is obviously important, the more subtle
proximity amenity should not be ignored on hedonic
regressions for barrier island property. To the extent that the
assessed value of a house follows the market value,
homeowners are being assessed at a higher value for the
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proximity to the beach and the ocean. Assigning proper value
for beach community residential property is important for tax
purposes, particularly with regard to local contributions for
beach maintenance.
“Ocean Proximity” page 7, paragraph 3.
We have addressed Appellants’ arguments supra regarding the
Examiner’s proffered rationales for combining the references. To the extent
Appellants are advancing a “teaching away” argument (App. Br. 18), our
reviewing court guides that “[a] finding that the prior art as a whole suggests
the desirability of a particular combination need not be supported by a
finding that the prior art suggests that the combination claimed by the patent
applicant is the preferred, or most desirable, combination.” In re Fulton,
391 F.3d 1195, 1200 (Fed. Cir. 2004). Teaching an alternative or equivalent
method, however, does not teach away from the use of a claimed method.
In re Dunn, 349 F.2d 433, 438 (CCPA 1965).
We note there is no requirement in an obviousness analysis for the
prior art to “contain a description of the subject matter of the appealed claim
in ipsissimis verbis.” In re May, 574 F.2d 1082, 1090 (CCPA 1978)
(emphasis added). Moreover, “‘the question under 35 USC 103 is not
merely what the references expressly teach but what they would
have suggested to one of ordinary skill in the art at the time the invention
was made.’” Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807
(Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)
(emphasis added)); see also MPEP § 2123.
This reasoning is applicable here. Therefore, based upon a
preponderance of the evidence, we are not persuaded the Examiner erred
regarding the legal conclusion of obviousness for grouped dependent claims
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23, 24, and 30. Accordingly, we sustain the Examiner’s Rejection B of
representative claim 23, and claims 24, and 30 which fall with claim 23. See
37 C.F.R. § 41.37(c)(1)(iv).

Rejection C
of Claims 2, 3, 6, 14, 15, 18, 26, 27, 29, 31–33, 35–37, and 39–41
under 35 U.S.C. § 103(a)

Regarding Rejection C, the Examiner finds the combination of
Stinson, “Ocean Proximity” and Hartz teaches or suggests all limitations of
claims 2, 3, 6, 14, 15, 18, 26, 27, 29, 31–33, 35–37, and 39–41. See Final
Act. 17–26.
Appellants focus their arguments on dependent claim 31, which we
consider to be illustrative of all the claims rejected under Rejection C,
because claims 2, 14, 26, 35, and 39 each recite similar limitations as claim
31, having commensurate scope. The remaining claims which were rejected
under Rejection C (claims 3, 6, 15, 18, 27, 29, 32, 33, 36, 37, 40, and 41)
each depend from one of claims 2, 14, 26, 31, 35, or 39.
Specifically, Appellants contend the following limitations of claim 31
are not taught or suggested by the Examiner’s proffered combination of
Stinson, “Ocean Proximity” and Hartz:

determining shapes from map data that correspond at least in
part to boundaries of the two or more geographic features; . . .
expanding the shapes by a predetermined amount; and

determining whether the each property of the plurality of
properties borders the two or more geographic features based
on whether one or more of the shapes overlaps a parcel of the
each property of the plurality of properties.
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Claim 31, see specific limitations contested on page 22 of the Appeal Brief.
In support, Appellants argue:
The Examiner again asserted that Hartz discloses “a search and
retrieval system which displays icons representing properties in
a given real-estate market on a digital map” and teaches the
above-noted features at col. 7, lines 1-15 and 45-60. (see Office
Action pg. 22). Appellant disagrees. Contrary to the assertions
of the Examiner, at col. 7, lines 1-15 and 45-60, Hartz states the
following:

[(Appellants reproduce portions of Hartz col. 7 on pages 22–23
of the Appeal Brief)].

At best, Hartz describes a Zoom Out and a Zoom In function.
However, there is no disclosure of "determining shapes from
map data that correspond at least in part to boundaries of the
two or more geographic features . . . expanding the shapes by a
predetermined amount, and determining whether the each
property of the plurality of properties borders the two or more
geographic features based on whether one or more of the shapes
overlaps a parcel of the each property of the plurality of
properties," as recited by claim 31. Merely making reference to
a Zoom Out and a Zoom In function is not sufficient to
adequately and reasonably disclose the features of claim 31.
App. Br. 22.
The Examiner disagrees with Appellants, and further explains the
basis for the rejection:
Col. 7, lines 1-15 teach that the processor searches for
properties located in a given area of a map. This area is a shape
and the ten properties are presented on the map by using ten
house symbols within the shape. Appellant has not provided
any explanation for the rationale for the assertion that the
shapes on the map of Hartz are not actually shapes.
Ans. 5.
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Turning to the evidence, we note Hartz (col. 7, ll. 1–2) describes, in
pertinent part: “The location of each icon on the map is derived, for
example, from the MLS information produced from the storage unit as a
result of the search.” (emphasis added).
Hartz (col. 7, ll. 45–49) also describes a zoom feature: “In another step
of the method, a user may expand or otherwise alter the search by expanding
or reducing the coverage area of the map using, for example, the ‘Zoom In’
and ‘Zoom Out’ selection areas 180 and 185.”
Thus, the Examiner appears to be reading the claimed determined
“shapes from map data that correspond at least in part to boundaries of the
two or more geographic features” on the Hartz icons 110, which are depicted
in Figure 3 as a house structure. Claim 31.
The Examiner also appears to be reading the claimed “expanding the
shapes by a predetermined amount” on Hartz’s zoom feature. See Col. 7,
ll. 45–49.
Both of these portions of Hartz describe Figure 3, which “includes the
overlaying of icons 110 on the map, where each icon represents the location
of a property available in the region covered.” Hartz, col. 6, ll. 59–61.
However, in reviewing the record, we find a preponderance of the
evidence supports Appellants’ contention that the Examiner has failed to
fully develop the record to show and explain how the proffered combination
of Stinson, “Ocean Proximity,” and Hartz teaches or suggests at least the
disputed claim language:
determining whether the each property of the plurality of
properties borders the two or more geographic features based
on whether one or more of the shapes overlaps a parcel of the
each property of the plurality of properties.
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Claim 31; see also similar language recited in claims 2, 14, 26, 35, and 39.
Although Hartz describes the “overlaying of icons 110 on the 60 map,
where each icon represents the location of a property available in the region
covered” (col. 6, l. 59–61), we find this is not the same (or suggestive) of the
aforementioned claim 31 step of “determining . . . based on whether one or
more of the shapes overlaps a parcel of the each property of the plurality of
properties” (claim 31, emphasis added), even when considered in
combination with the “Ocean Proximity” teaching of the two geographic
features identified by the Examiner: (1) beach, and (2) an inland location,
which are separated by a distance that is measured in miles. “Ocean
Proximity” p.7, ¶ 3. See Final Act. 12.
Therefore, based upon a preponderance of the evidence, Appellants
have shown the Examiner erred regarding all claims which are rejected
under §103 Rejection C. Accordingly, we are constrained on this record
reverse the Examiner’s Rejection C of claims 2, 3, 6, 14, 15, 18, 26, 27, 29,
31–33, 35–37, and 39–41.

Rejection D
of Claims 34, 38, and 42
under 35 U.S.C. § 103(a)

Regarding Rejection D, the Examiner finds the combination of
Stinson, “Ocean Proximity” and Hartz teaches or suggests all limitations of
dependent claims 34, 38, and 42. See Final Act.
Appellants contend: “Similar to the above discussions, the
combination of Stinson and Ocean Proximity fails to yield all of the features
of Appellant's claims 1, 13, and 25, which is incorporated by dependent
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claims 34, 38, and 42, respectively. Moreover, Humphries fails to overcome
these deficiencies of Stinson and Ocean Proximity.” App. Br. 24.
However, we find no deficiencies with the Examiner’s base
combination with Stinson and Ocean Proximity, for the reasons discussed
above regarding Rejection B. We note that claims 34, 38, and 42, depend
directly from independent claims 1, 13, and 25, respectively.
Therefore, based upon a preponderance of the evidence, we are not
persuaded the Examiner erred regarding the legal conclusion of obviousness
for grouped dependent claims 34, 38, and 42. Accordingly, we sustain the
Examiner’s rejection of representative claim 34, and claims 38, and 42
which fall with claim 34. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSIONS
The Examiner did not err in rejecting claims 1–3, 6, 13–15, 18, 23–27,
and 29–42 under 35 U.S.C. § 101, as being directed to a judicial exception,
without significantly more.
The Examiner erred in rejecting claims 2, 3, 6, 14, 15, 18, 26, 27, 29,
31–33, 35–37, and 39–41 under pre-AIA 35 U.S.C. § 103(a).
The Examiner did not err in rejecting claims 1, 13, 23–25, 30, 34, 38,
and 42 under pre-AIA 35 U.S.C. § 103(a).

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DECISION
We affirm the Examiner’s decision rejecting claims 1–3, 6, 13–15, 18,
23–27, and 29–42 under 35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 1, 13, 23–25, 30,
34, 38, and 42 under pre-AIA 35 U.S.C. § 103(a).
We reverse the Examiner’s decision rejecting claims 2, 3, 6, 14, 15,
18, 26, 27, 29, 31–33, 35–37, and 39–41 under pre-AIA 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED