William L. Joseph et al.

Patent Trials and Appeals Board

Aug 12, 2019

13644358 - (D) (P.T.A.B. Aug. 12, 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.
13/644,358 10/04/2012 William L. Joseph 72167.000777 1081
131244 7590 08/12/2019
Hunton Andrews Kurth LLP/JPMorgan Chase
Intellectual Property Department
2200 Pennsylvania Avenue, NW
Suite 800
Washington, DC 20037
EXAMINER
YOUNG, MICHAEL C
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
08/12/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM L. JOSEPH,
BILL SANDERS HERRMANN, LISA M. FORADORI,
KEVIN WATTERS, and RAVI ACHARYA
____________

Appeal 2018-001565
Application 13/644,3581
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
BRUCE T. WIEDER, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

1 According to Appellants, the real party in interest is JPMorgan Chase
Bank, N.A. (Appeal Br. 1).

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STATEMENT OF THE CASE2
William L. Joseph, Bill Sanders Herrmann, Lisa M. Foradori, Kevin
Watters, and Ravi Acharya (Appellants) seek review under
35 U.S.C. § 134(a) of a final rejection of claims 7–11 and 29–35, the only
claims pending in the application on appeal. Claims 1–6 and 12–28 have
been cancelled. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
CLAIMED SUBJECT MATTER
The Appellants invented a way of home evaluation and financing.
Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 7, which is reproduced below (bracketed matter and some
paragraphing added).
7. A method for creating a property preference profile for a
user, comprising:
[1] a mobile electronic device that is associated with a user
automatically sensing a physical location of the mobile
electronic device;
[2] retrieving, from a database, a property profile for a property
associated with the physical location of the mobile
electronic device,

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed March 23, 2017) and Reply Brief (“Reply Br.,” filed November
28, 2017), and the Examiner’s Answer (“Ans.,” mailed October 4, 2017),
and Final Action (“Final Act.,” mailed January 4, 2017).
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the property profile comprising a plurality of property
attributes for the property;
[3] the mobile electronic device monitoring a time that the
mobile electronic device is present at the physical location
associated with the property;
[4] at least one computer processor identifying one of the
plurality of property attributes
that the time present at the physical location associated
with the property represents a user preference for;
and
[5] at least one of a plurality of computer processors
automatically creating or updating a user level of interest
in the identified property attribute
in a property preference profile for the user.
The Examiner relies upon the following prior art:
Jenkins US 6,681,107 B2 Jan. 20, 2004
Greene US 2005/0154655 A1 July 14, 2005
Redman US 2006/0010027 A1 Jan. 12, 2006
Dupray US 2010/0063829 A1 Mar. 11, 2010
Moser US 8,979,646 B2 Mar. 17, 2015
Drupal.org, Time Tracker, https://www.drupal.org/project/time_tracker,
1/13/2010
Claims 7–11 and 29–35 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 7, 9–11, 29–33, and 35 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Dupray, Jenkins, Moser, and Redman.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Dupray, Jenkins, Moser, Redman, and Drupal.
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Claim 34 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Dupray, Jenkins, Moser, Redman, and Greene.

ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of obviousness turn primarily on whether one of ordinary
skill would have been led to combine the prior art.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Dupray
01. Dupray is directed to real estate transaction processing
systems. Dupray para. 1.
02. Dupray describes assisting the finding and purchasing of real
estate. Dupray models feasibility and/or likelihood of a real estate
transaction being completed by a potential buyer on each of one or
more properties. The modeling may be performed per potential
property being considered by the potential buyer. Dupray para. 3–
4.
Jenkins
03. Jenkins is directed to accessing and leaving messages at
physical coordinate way points. Using hand held, user supported,
or car mounted wireless computing and/or Communication
Devices, users can either leave or access messages which become
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available by virtue of the physical coordinate location of a
wireless network Subscriber's Device. Jenkins 1:18–24.
04. Jenkins describes notifying other persons of a person's location
within a designated radius. Jenkins 5:44–46.
Moser
05. Moser is directed to data collection in a gaming establishment
and use of this data to better entertain patrons. Moser 1:17–18.
Redman
06. Redman is directed to optimizing product sales revenues and
customer service by tracking customer movement through a store.
Redman para. 2.
07. Redman describes customer movement being tracked and
recorded to obtain the traffic pattern of customers. Data reflecting
individual customer movement is gathered by tracking the
movement of an individual customer, referred to herein as path
data. Path data includes the locations visited by an individual
customer, and may include the amount of time spent by a
customer at a location in the store, the time of day a customer
spends at a location in the store, and the date a customer spends
time at a location in the store. Redman para. 25.
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ANALYSIS
Claims 7–11 and 29–35 rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more
STEP 13
Claim 7, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat else
is there in the claims before us? To answer that question, . . .
consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as 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.”
Alice Corp., Pty. Ltd. v CLS Bank Intl, 573 U.S. 208, 217–18 (2014)
(citations omitted) (citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining

3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019)
(“Revised Guidance”).
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whether the claims recite one of the judicial exceptions (a law of nature, a
natural phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception, i.e., that the claims “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 at 54. If
the claims are directed to a judicial exception, then finally determining
whether the claims provide an inventive concept because the additional
elements recited in the claims provide significantly more than the recited
judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 7 recites sensing a physical location, retrieving a profile, monitoring a
time present at the location, identifying attributes, and creating or updating
data representing user level of interest. Sensing physical location is simply
receiving and analyzing geographic data. Monitoring a time is simply
retrieving time data. Identifying attributes is rudimentary analysis. Thus,
claim 7 recites retrieving, analyzing, and updating data. None of the
limitations recite technological implementation details for any of these steps,
but instead recite only results desired by any and all possible means.
From this we see that claim 7 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
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extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes6. Among those certain methods of
organizing human activity listed in the Revised Guidance are commercial or
legal interactions. Like those concepts, claim 7 recites the concept of
gathering sales lead information. Specifically, claim 7 recites operations that
would ordinarily take place in advising one to update a user property interest
profile based on some attribute about a property at some physical location at
some time. The advice to update a user property interest profile based on
some attribute about a property at some physical location at some time
involves matching property inventories with sales prospects, which is an
economic act, and updating user interest in such properties’ data, which is an
act ordinarily performed in the stream of commerce. For example, claim 7
recites “identifying one of the plurality of property attributes that the time
present at the physical location associated with the property represents a user
preference for,” which is an activity that would take place whenever one is
matching properties for sale with potential prospects. Similarly, claim 1

4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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recites “creating or updating a user level of interest in the identified property
attribute in a property preference profile for the user,” which is also
characteristic of updating sales leads.
The Examiner determines the claims to be directed to
creating a property preference profile for a user by
automatically sensing a physical location of the mobile device,
retrieving a profile of the property associated with the location
of the device, monitoring a time the user/mobile device spends
at the property and creating or updating a user based on the time
spent at the location. This is essentially collecting data,
recognizing certain data with the collected data set, and storing
that recognized data in a memory.
Final Act. 13–14.
The preamble to claim 7 recites that it is a method for creating a property
preference profile for a user. The steps in claim 7 result in creating or
updating such a profile absent any technological mechanism other than a
conventional computer for doing so.
As to the specific limitations, limitations 2 and 3 recite data gathering.
Limitation 5 recites conventional data updating. Limitations 1 and 4 recite
generic retrieving and analyzing of location and property data, which advise
one to apply generic functions to get to these results. The limitations thus
recite advice for updating a user property interest profile based on some
attribute about a property at some physical location at some time. To
advocate updating a user property interest profile based on some attribute
about a property at some physical location at some time is conceptual advice
for results desired and not technological operations.
The Specification at paragraph 2 describes the invention as relating to
home evaluation and financing. Thus, all this intrinsic evidence shows that
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claim 7 is directed to gathering data for generating property sales to
identified prospects, i.e., gathering sales lead information. This is consistent
with the Examiner’s determination.
This in turn is an example of commercial or legal interactions as a certain
method of organizing human activity because generating property sales is a
major source of commercial interactions. The concept of gathering sales lead
information by updating a user property interest profile based on some
attribute about a property at some physical location at some time is one idea
for matching such prospects with properties to be sold. The steps recited in
claim 7 are part of how this might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Mortgage Grader, Inc. v. First
Choice Loan Services Inc., 811 F.3d 1314, 1324 (2016) (loan shopping for
properties).
Alternately, this is an example of concepts performed in the human mind
as mental processes because the steps of retrieving, analyzing, and updating
data mimic human thought processes of observation, evaluation, judgment,
and opinion, perhaps with paper and pencil, where the data interpretation is
perceptible only in the human mind. See In re TLI Commc’ns LLC Patent
Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016). Claim 7, unlike the
claims found non-abstract in prior cases, uses generic computer technology
to perform data retrieval, analysis, and update and does not recite an
improvement to a particular computer technology. See, e.g., McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016)
(finding claims not abstract because they “focused on a specific asserted
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improvement in computer animation”). As such, claim 7 is directed to
retrieving, analyzing, and updating data, and not a technological
implementation or application of that idea.
From this we conclude that at least to this degree, claim 7 is directed
to gathering sales lead information by updating a user property interest
profile based on some attribute about a property at some physical location at
some time, which is a commercial and legal interaction, one of certain
methods of organizing human activity identified in the Revised Guidance,
and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 7 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e., integrated into a practical application.7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, “all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas.” Thus, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept. “[A]pplication[s]” of such
concepts “‘to a new and useful end,’” we have said, remain
eligible for patent protection. Accordingly, in applying the
§ 101 exception, we must distinguish between patents that
claim the “‘buildin[g] block[s]’” of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Step 3 is a pure data gathering step.
Limitations describing the nature of the data do not alter this. Step 5 is
insignificant post solution activity, such as storing the results. Steps 1, 2, and
4 recite generic computer processing expressed in terms of results desired by
any and all possible means and so present no more than conceptual advice.
All purported inventive aspects reside in how the data is interpreted and the
results desired, and not in how the process physically enforces such a data
interpretation or in how the processing technologically achieves those
results.
Viewed as a whole, Appellants’ claim 7 simply recites the concept of
gathering sales lead information by updating a user property interest profile
based on some attribute about a property at some physical location at some
time as performed by a generic computer. This is no more than conceptual
advice on the parameters for this concept and the generic computer
processes necessary to process those parameters, and do not recite any
particular implementation.
Claim 7 does not, for example, purport to improve the functioning of the
computer itself. Nor does it affect an improvement in any other technology
or technical field. The Specification spell out different generic equipment8
and parameters that might be applied using this concept and the particular
steps such conventional processing would entail based on the concept of
gathering sales lead information by updating a user property interest profile

8 The Specification describes a laptop computer, mobile phone, or desktop
computer. Spec. paras. 36–37.
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based on some attribute about a property at some physical location at some
time under different scenarios. It does not describe any particular
improvement in the manner a computer functions. Instead, claim 7 at issue
amounts to nothing significantly more than an instruction to apply gathering
sales lead information by updating a user property interest profile based on
some attribute about a property at some physical location at some time using
some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225–26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses 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.
We conclude that claim 7 is directed to achieving the result of gathering
sales lead information by advising one to update a user property interest
profile based on some attribute about a property at some physical location at
some time, as distinguished from a technological improvement for achieving
or applying that result. This amounts to commercial or legal interactions,
which fall within certain methods of organizing human activity that
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constitute abstract ideas. The claim does not integrate the judicial exception
into a practical application.
STEP 2B
The next issue is whether claim 7 provides an inventive concept because
the additional elements recited in the claim provide significantly more than
the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
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computer for retrieving, analyzing, and updating data amounts to electronic
data query and retrieval—one of the most basic functions of a computer. The
limitation of a mobile electronic device is not a step, but a recitation of
context, viz. a possible platform, which is only one of the contexts possible
as described in the Specification. The steps do not depend on this as a
context. All of these computer functions are generic, routine, conventional
computer activities that are performed only for their conventional uses. See
Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also
see In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). None of
these activities are used in some unconventional manner nor do any produce
some unexpected result. Appellants do not contend they invented any of
these activities. In short, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
upon, “even if a process of collecting and analyzing information is ‘limited
to particular content’ or a particular ‘source,’ that limitation does not make
the collection and analysis other than abstract.” SAP America, Inc. v.
InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants’ claim 7 add nothing that is not already present when the steps
are considered separately. The sequence of data retrieval-analysis-update is
equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
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abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis,
modification, generation, display, and transmission), Two-Way Media Ltd. v.
Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir.
2017) (sequence of processing, routing, controlling, and monitoring). The
ordering of the steps is therefore ordinary and conventional.
We conclude that claim 7 does not provide an inventive concept because
the additional elements recited in the claim do not provide significantly more
than the recited judicial exception.
REMAINING CLAIMS
Claim 7 is representative. The remaining method claims merely describe
process parameters. We conclude that the method claims at issue are
directed to a patent-ineligible concept itself, and not to the practical
application of that concept. There are no structural claims. As a corollary,
the claims are not directed to any particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of gathering sales lead information by advising one in
updating a user property interest profile based on some attribute about a
property at some physical location at some time, without significantly more.
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APPELLANTS’ ARGUMENTS
As to Appellants’ Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 13–16 and Answer 3–8 and
reach similar legal conclusions. We now turn to the Reply Brief.
We are not persuaded by Appellants' argument that
The instant claims do not simply present the results of the
collection and analysis of data - instead, the claims specifically
recite that a mobile electronic device automatically senses a
physical location of the mobile electronic device and monitors
time that the mobile electronic device is present at the physical
location associated with the property. The method further
identifies one of the plurality of property attributes that the time
present at the physical location associated with the property
represents a user preference for and automatically creating or
updating a user level of interest in the identified property
attribute in a property preference profile for the user.
Reply Br. 3. As we determined supra, sensing time and location is no more
than receiving and analyzing data representing location and time. Absent any
particular technological implementation details, this is simply reciting that a
mobile phone, which generically includes the hardware and software to track
its location relative to cell phone towers, gathers the data necessary to sense
a physical location according to its ordinary use. See In re TLI
Communications LLC Patent Litigation, 823 F.3d 607, 612–13 (Fed. Cir.
2016). (Using a generic telephone for its intended purpose was a well-
established “basic concept” sufficient to fall under Alice step 1.) Similarly,
generic computers contain real time clocks that track time. Identification and
updating of data are similarly generic computer operations devoid of
implementation details.
At that level of generality, the claims do no more than
describe a desired function or outcome, without providing any
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limiting detail that confines the claim to a particular solution
to an identified problem. The purely functional nature of the
claim confirms that it is directed to an abstract idea, not to a
concrete embodiment of that idea.
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269
(2016).
We are not persuaded by Appellants' argument that
this is not a case in which an abstract idea is being applied to a
particular environment. Rather, the technology itself - the use of
location-sensing technology, timing technology, etc. - are used
to create or update a user level of interest in the identified
property attribute in a property preference profile for the user.
Thus, unlike the claims in Alice and other cases where a
computer simply executed a known algorithm, the claims here
integrate many technologies to improve the home evaluation
process.
Reply Br. 4. The recitation of a mobile electronic device is no more than a
recitation of context, as the Specification describes a desktop computer as an
alternative context. The claim recites no technological implementation details.
The technology recited as such is no more than generic location sensing and
time measurement, both part of generic computer equipment before the date of
filing. An idea to integrate many technologies to improve the home
evaluation process is still just an idea, a concept. This also responds to
Appellants’ argument at Reply Br. 5.
Appellants also attempt to analogize the claims to those involved in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016). Reply Br. 5–6. In McRO, the court held that, although the
processes were previously performed by humans, “the traditional process
and newly claimed method . . . produced . . . results in fundamentally
different ways.” FairWarning v. Iatric Systems, 839 F.3d 1089, 1094
(Fed. Cir. 2016) (differentiating the claims at issue from those in McRO).
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In McRO, “it was the incorporation of the claimed rules not the use of the
computer, that improved the existing technology process,” because the
prior process performed by humans “was driven by subjective
determinations rather than specific, limited mathematical rules.” 837 F.3d
at 1314 (internal quotation marks, citation, and alterations omitted). In
contrast, the claims of the instant application merely implement an old
practice of using decision criteria in making sales decisions in a new
environment. Appellants have not argued that the claimed processes of
selecting products apply rules of selection in a manner technologically
different from those which humans used, albeit with less efficiency, before
the invention was claimed. Merely pigeon-holing the objects of decision
making in tiers to aid decision making is both old and itself abstract. Real
estate agents have long noticed which properties prospects spend more time
at and noted the location of such properties. Automating the recording of an
address and of time spent is just that, automation of known existing practice.
The claims in McRO were not directed to an abstract idea, but
instead were directed to “a specific asserted improvement in
computer animation, i.e., the automatic use of rules of a
particular type.” We explained that “the claimed improvement
[was] allowing computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters’
that previously could only be produced by human animators.”
The claimed rules in McRO transformed a traditionally
subjective process performed by human artists into a
mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094 (differentiating the claims at issue from
those in McRO).
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Claims 7, 9–11, 29–33, and 35 rejected under 35 U.S.C. § 103(a) as
unpatentable over Dupray, Jenkins, Moser, and Redman
We are persuaded by Appellants' argument that “the Examiner has
used the claim as a roadmap to combine the references as proposed.” App.
Br. 14. Jenkins does not describe monitoring where and how much time a
prospect spends at a potential property for sale. None of the remaining
references describes doing so in the context of property sales.
Jenkins describes accessing messages at physical coordinate way
points and notifying other persons of a person's location within a designated
radius. Accessing messages is different from populating a database of times
and locations one visited. There is no apparent reason to infer that one of
ordinary skill would have thought to use Jenkins’s techniques for accessing
messages along a way to gather data about a prospect looking at different
properties unrelated to providing messages.
Moser describes monitoring time and place in a gaming establishment.
A gaming establishment is at a single address and the data represents an
affinity for a customer toward different games. There is no apparent reason
to infer that one of ordinary skill would have thought to use Moser’s
techniques for monitoring prospects looking at different properties unrelated
to games.
Redman describes monitoring time and place in a retail establishment.
A retail establishment is at a single address and the data represents an
affinity for a customer toward different items for sale at that address. There
is no apparent reason to infer that one of ordinary skill would have thought
to use Redman’s techniques for monitoring prospects looking at different
properties unrelated to retail inventory items.
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The Examiner determines
it would have been obvious to one of ordinary skill in the art at
the time of the invention to apply the known technique of
automatically sensing the physical location of the mobile device
to the known method for creating a property preference profile
for a user while maintaining and retrieving property profiles
from a database and providing a mobile device to provide a
communication system for accessing information over a
wireless network at specific latitudinal and longitudinal
coordinate locations or way points. One of ordinary skill in the
art would have been motivated to apply the known technique of
automatically sensing the physical location of the mobile device
because it would provide a communication system for
accessing information over a wireless network at specific
latitudinal and longitudinal coordinate locations or way points
Furthermore, it would have been obvious to one of ordinary
skill in the art at the time of the invention to apply the known
technique of automatically sensing the physical location of the
mobile device to the known method for creating a property
preference profile for a user while maintaining and retrieving
property profiles from a database and providing a mobile device
to provide a communication system for accessing information
over a wireless network at specific latitudinal and longitudinal
coordinate locations or way points, because the claimed
invention is merely applying a known technique to a known
method ready for improvement to yield predictable results.
Answer 10–11 (citations omitted). The Examiner thus determines that (1)
automatically sensing the physical location of the mobile device would
provide a communication system for accessing information over a wireless
network at specific latitudinal and longitudinal coordinate locations or way
points. We agree, but this does no more than demonstrate it was obvious for
one to carry a cell phone.
The Examiner next determines that (2) creating a property preference
profile for a user while maintaining and retrieving property profiles from a
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database is merely applying a known technique to a known method ready for
improvement to yield predictable results. Here the Examiner only concludes
the results are predictable. They are predictable only in the sense that once
one has the insight to do so, it is clear how to do so. The Examiner makes
no determination as to why one of ordinary skill would have had that insight.
The Examiner has determined only that the references could be predictably
combined, not that one of ordinary skill would do so.
Significantly, it was only in the context of those findings about
why a skilled artisan would have had reason to add a third die
that the Board quoted the Supreme Court’s reference to a
“predictable variation” in KSR Int’l Co. v. Teleflex Inc., 550
U.S. 398, 417, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007). Berk–
Tek, 2014 WL 1253012 at *19. The Supreme Court’s passage
does not establish that it suffices for obviousness that a
variation of the prior art would predictably work, but requires
consideration of whether, in light of factors such as “design
incentives and other market forces,” the hypothetical skilled
artisan would recognize the potential benefits and pursue the
variation. KSR, 550 U.S. at 417, 127 S.Ct. 1727.
Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1075 (Fed Cir 2015).
The Examiner appears to be using the reasoning exemplified in MPEP
§ 2143(I.A) viz., combining prior art elements according to known methods
to yield predictable results. This section makes several caveats that there
must be some reason articulated for the combination. Almost every
invention is a combination of familiar elements to some degree. It cannot be
sufficient to simply say the elements are already known themselves. There
must be some reason articulated to combine them. “[I]t can be important to
identify a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed new invention
does.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). In KSR, the
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invention simply combined two elements of an accelerator, each already
described as desirable with an accelerator pedal. The Examiner has made no
similar finding of commonality of context in a collection of potential
property sales data with the prior art.
Claim 8 rejected under 35 U.S.C. § 103(a) as unpatentable over Dupray,
Jenkins, Moser, Redman, and Drupal
This claim depends from a parent whose rejection we determine to be
improper.
Claim 34 rejected under 35 U.S.C. § 103(a) as unpatentable over Dupray,
Jenkins, Moser, Redman, and Greene
This claim depends from a parent whose rejection we determine to be
improper.
CONCLUSIONS OF LAW
The rejection of claims 7–11 and 29–35 under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more is proper.
The rejection of claims 7, 9–11, 29–33, and 35 under 35 U.S.C.
§ 103(a) as unpatentable over Dupray, Jenkins, Moser, and Redman is
improper.
The rejection of claim 8 under 35 U.S.C. § 103(a) as unpatentable
over Dupray, Jenkins, Moser, Redman, and Drupal is improper.
The rejection of claim 34 under 35 U.S.C. § 103(a) as unpatentable
over Dupray, Jenkins, Moser, Redman, and Greene is improper.
DECISION
The rejection of claims 7–11 and 29–35 is affirmed.
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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED