William L. Joseph et al.Download PDFPatent Trials and Appeals BoardAug 12, 201913644358 - (D) (P.T.A.B. Aug. 12, 2019) Copy Citation 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). Appeal 2018-001565 Application 13/644,358 2 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). Appeal 2018-001565 Application 13/644,358 3 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. Appeal 2018-001565 Application 13/644,358 4 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 Appeal 2018-001565 Application 13/644,358 5 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. Appeal 2018-001565 Application 13/644,358 6 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”). Appeal 2018-001565 Application 13/644,358 7 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 Appeal 2018-001565 Application 13/644,358 8 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). Appeal 2018-001565 Application 13/644,358 9 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 Appeal 2018-001565 Application 13/644,358 10 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 Appeal 2018-001565 Application 13/644,358 11 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). Appeal 2018-001565 Application 13/644,358 12 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. Appeal 2018-001565 Application 13/644,358 13 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 Appeal 2018-001565 Application 13/644,358 14 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 Appeal 2018-001565 Application 13/644,358 15 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 Appeal 2018-001565 Application 13/644,358 16 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. Appeal 2018-001565 Application 13/644,358 17 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 Appeal 2018-001565 Application 13/644,358 18 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). Appeal 2018-001565 Application 13/644,358 19 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). Appeal 2018-001565 Application 13/644,358 20 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. Appeal 2018-001565 Application 13/644,358 21 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 Appeal 2018-001565 Application 13/644,358 22 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 Appeal 2018-001565 Application 13/644,358 23 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. Appeal 2018-001565 Application 13/644,358 24 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 Copy with citationCopy as parenthetical citation