Alan W. Johnson

Patent Trials and Appeals Board

Sep 26, 2019

12778461 - (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.
12/778,461 05/12/2010 Alan W. Johnson JR. 10531-023US1 6482
124539 7590 09/26/2019
Altisource
Meunier Carlin & Curfman, LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
EXAMINER
PRESTON, JOHN O
ART UNIT PAPER NUMBER
3691
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):
Sunette.Pilat@altisource.com
docketing@mcciplaw.com
ipcounsel@altisource.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ALAN W. JOHNSON JR.
____________________

Appeal 2018-003158
Application 12/778,461
Technology Center 3600
____________________

Before JOSEPH L. DIXON, ELENI MANTIS MERCADER, and JOYCE
CRAIG, Administrative Patent Judges.

CRAIG, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellant1 appeals the final rejection of
claims 1–5, 7–21, 23–29, and 31–33, which are all of the claims pending in
the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Altisource
Solutions S.ὰ.r.1. of Luxembourg. App. Br. 3.
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STATEMENT OF THE CASE
The Invention
Appellant’s disclosed embodiments and claimed invention relate to a
loan quotation system and method. Spec. ¶ 3.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A system comprising:
a service provider or consumer advertising platform that
provides a basic loan quotation or a rate watch report to a
consumer data entry point device without first transferring
information obtained from the consumer data entry point device
to one or more different lenders, and that subsequently, after
providing the basic loan quotation or the rate watch report to
the consumer data entry point device and upon permission
being granted by a consumer via a software application loaded
on the consumer data entry point device, transmits contact
information of the consumer and a request for a personalized
loan quote to a selected lender of the one or more different
lenders on behalf of the consumer;
wherein the consumer data entry point device is
operatively coupled, via a network, to one or more servers, and
is configured for entering personal data, securely transmitting
the personal data, receiving the base loan quotation or a rate
watch report, and receiving the personalized loan quote via the
software application loaded on the data entry point device;
wherein the providing of the basic loan quotation or the
rate watch report includes one or more lending rates being
watched and reported by the service provider or consumer
advertising platform to the consumer data entry point device in
response to: i) a request being made by the consumer via the
software application; and ii) the personal data being entered by
the consumer via the software application;
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wherein the providing of the basic loan quotation or the
rate watch report further includes the one or more lending rates
being compared by the service provider or consumer
advertising platform to a target lending rate provided by the
consumer, and a consumer alert being sent by the service
provider or consumer advertising platform to the consumer data
entry point device upon the service provider or consumer
advertising platform finding a match between the one or more
lending rates and the target lending rate;
wherein the service provider or consumer advertising
platform includes a master database and a client sync, wherein
the client sync is configured to execute a backend
synchronization process that syncs lender product pricing and
eligibility information to multiple backend severs and one or
more lender platforms, wherein each backend server includes a
respective local database, wherein the backend synchronization
process includes the client sync performing the steps
comprising: triggering a periodic event; loading an XML for a
given lender to determine lender information for a specified
lender and a location of the master database; communicating
with the master database at the location to retrieve the
respective lender information; locating new, modified, or
deleted data at the master database; and updating a specified
location database based on the located new, modified, or
deleted data; and
wherein the client sync comprises a combination of at
least two client applications that allow for maintenance,
duplication, and synchronization of guideline and lender data
between multiple server databases and database instances,
wherein each client application has an XML configuration
which dictates the respective client application's access, order,
and which lender and lender products to synchronize via which
tables.
Rejection on Appeal
Claims 1–5, 7–21, 23–29, and 31–33 stand rejected under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter. Final Act. 4–5.
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CLAIM GROUPING
Based on Appellant’s arguments (App. Br. 11–16) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the patent-
ineligible subject matter rejection of claims 1–5, 7–21, 23–29, and 31–33
on the basis of representative claim 1.2
PRINCIPLES OF LAW
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n,
601 F.3d 1319, 1331 (Fed. Cir. 2010).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.3
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) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).

2 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
3 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the patent-eligibility
inquiry under § 101.
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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. 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.”); see also Bilski v. Kappos, 130 S. Ct. 3218 (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, 130 S. Ct. 3218
(2010)); 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 rubber products” (Diehr, 450 U.S. at
191); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber,
smelting ores” (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 “[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
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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. (citation omitted) (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.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
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The PTO recently published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”). Under the Revised Guidance, we first look to whether
the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes);4 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).5
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:
(3) adds a specific limitation beyond the judicial
exception that are not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.6
See Revised Guidance.

4 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
5 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
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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ANALYSIS
Step 1
Claim 1, as a system (machine) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 is directed to a certain method
of organizing human activity related to commercial practices. Final Act. 4
(citing 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 abstraction)).
The Specification provides context as to what the claimed invention is
directed to. In this case, the Specification discloses that the invention “is
generally related to an apparatus and method for providing consumers with
loan quotations, and more particularly, to an apparatus and method whereby
consumers can enter personal information and, in response to the entered
data, obtain tailored loan quotations in a convenient setting.” Spec. ¶ 3.
Appellant’s Abstract describes the invention as “[a] loan quotation
system and method . . . having a consumer data entry point device
operatively coupled, via a network, to one or more severs for entering data
and receiving a responsive loan quotation.” Abstract.
We agree with the Examiner that claim 1 recites commercial
interactions that are a certain method of organizing human activity and, thus,
an abstract idea. The type of activity, i.e., providing a quote or report,
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transmitting information, entering personal data, transmitting personal data,
receiving the quotation or report, comparing rates, sending an alert, and
synchronizing information, as recited in claim 1, includes commercial
interactions among a service provider or consumer advertising platform, a
lender, and a consumer.
Under the broadest reasonable interpretation standard,7 we conclude
that all of the limitations, with the exception noted by the Examiner, would
ordinarily occur when organizing human activity through commercial
interactions. See Final Act. 4 (determining that the recited “consumer data
entry point device coupled to one or more servers” is an additional element
and not part of the abstract idea). For example, a service provider provides a
basic loan quotation or report to a consumer and subsequently transmits the
consumer’s contact information and a request for a loan to a lender selected
by the consumer, as recited in claim 1. The recited functions are abstract,
whether initiated person-to-person, on paper, or using a computer with
generic databases and synchronization processes.

7 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re America Acad.
of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this
standard, we interpret claim terms using “the broadest reasonable meaning
of the words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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Thus, under Step 2A(i), we agree with the Examiner that claim 1’s
system recites commercial interactions, which amount to a method of
organizing human activity and, thus, an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “practical application” Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
The only “additional element” that the Examiner identified is the
recited “consumer data entry point device coupled to one or more servers.”
Final Act. 4. Appellant, however, argues that the recited “master database”
and “client sync,” which are not “additional elements” for the purpose of our
analysis, improve the online web quoting system in a way that overcomes
technical problems found in prior art systems. See App. Br. 13–14.
Not only are the recited “master database” and “client sync” not
“additional elements,” claim 1 as a whole merely uses instructions to
implement the recited abstract idea on a computer or, alternatively, merely
uses a computer as a tool to perform the abstract idea. In other words, the
claims merely recite an abstract idea with instructions to implement it on “a
service provider or consumer advertising platform” that includes “a master
database and a client sync, wherein the client sync is configured to execute a
backend synchronization process that syncs lender product pricing and
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eligibility information to multiple backend severs and one or more lender
platforms.” Claims App’x 18.
These are generic, purely conventional elements. In fact, the
Specification states that the “system” preferably is “an enterprise-class web-
based system that is sold as software and implemented in a mortgage
broker/banks’ environment or is hosted with a company they choose.” Spec.
¶ 73. The Specification describes the recited “consumer advertising
platform” as “one or many servers and databases.” Id. at ¶ 31. The
Specification further describes that “[t]he master database preferably runs
bots and has automated processes to import all lender data every day, as
frequently as pricing is released by the various investors and banks.” Id.
The Specification describes that “the system client sync provides backend
synchronization for syncing lender, rate, guideline and other product pricing
and eligibility information to multiple backend severs and lender's specific
system lender platforms.” Id. at 46. The Specification identifies certain data
in the master database (Spec. ¶ 32), but nowhere describes an
unconventional use of the master database or client sync.
Thus, the recited “master database” and “client sync,” even if they
were considered “additional elements,” are insufficient to transform the
claims into a patent-eligible application.
Thus, on this record, Appellant has not shown integration into a
practical application under the guidance of Manual of Patent Examining
Procedure section 2106.05(a) (“Improvements to the Functioning of a
Computer or to Any Other Technology or Technical Field”) or section
2106.05(e) (“Other Meaningful Limitations”). Nor has Appellant advanced
any arguments in the Brief(s) that are directed to the Bilski machine-or-
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transformation test, which would only be applicable to the method (process)
claims on appeal. See MPEP §§ 2106.05(b) (Particular Machine) and
2106.05(c) (Particular Transformation).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus the claim is directed to the judicial exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., 830 F.3d at 1353).
Here we must “determine whether the claims do significantly more
than simply describe [the] abstract method” and thus transform the abstract
idea into patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 715 (Fed. Cir. 2014). We look to see whether there are any
“additional features” in the claims that constitute an “inventive concept,”
thereby rendering the claims eligible for patenting even if they are directed
to an abstract idea. Alice, 573 U.S. at 221. Those “additional features” must
be more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
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equivalent) with an abstract idea8; mere instructions to implement an
abstract idea on a computer9; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.10
Evaluating representative claim 1 under step 2B, we conclude it lacks
an inventive concept that transforms the abstract idea of a certain method
organizing human activity into a patent-eligible application of that abstract
idea. In addition to the conventional description of the “master database”
and “client sync” described above, it is well-settled that a claimed
invention’s “use of the ineligible concept to which it is directed cannot
supply the inventive concept that renders the invention ‘significantly more’
than that ineligible concept.” BSG Tech LLC v. Buyseasons, Inc., 899 F.3d
1281, 1290 (Fed. Cir. 2018); Synopsys, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still
an abstract idea.”).
The Specification describes the additional element “consumer data
entry point device,” which is operatively coupled, via a network, to one or
more servers, as follows:
the consumer data entry point devices 112 can be conventional
cellular telephones, conventional cable set top boxes, gaming
consoles, digital video recording devices or handheld devices
for sending and receiving information over a communication
network such as a conventional cellular telephone network or
cable network connected to the Internet.

8 Alice, 573 U.S. at 221–23.
9 Alice, 573 U.S. at 221, e.g., simply implementing a mathematical principle
on a physical machine, namely a computer (citing Mayo, 566 U.S. at 84–85).
10 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
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Spec. ¶ 18.
Because the Specification describes the additional element in general
terms, without describing the particulars, we conclude the claim limitation
may be broadly but reasonably construed as reciting conventional computer
components and techniques, particularly in light of Appellant’s
Specification, as quoted above.11
With respect to this step of the analysis, Appellant argues that “[t]he
claims do not set forth an idea and merely instruct one to ‘apply it on
computer’ but rather provides detailed limitations explaining a specific
architecture and sequence off communications for how the improved online
web quoting system can be achieved.” App. Br. 16.
In response, we note the Supreme Court emphasizes, “[t]he ‘novelty’
of any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the § 101 categories of possibly patentable subject matter.” Diamond v.
Diehr, 450 U.S. 175, 188–89 (1981) (emphasis added). Our reviewing court
further guides that “[e]ligibility and novelty are separate inquiries.” Two-
Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340
(Fed. Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838
F.3d 1253, 1263 (Fed. Cir. 2016) (holding that “[e]ven assuming” that a
particular claimed feature was novel does not “avoid the problem of
abstractness”).

11 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a system that includes a “consumer data entry point device,”
which is operatively coupled, via a network, to one or more servers, is
simply not enough to transform the patent-ineligible abstract idea here into a
patent-eligible invention under Step 2B. See Alice, 573 U.S. at 221
(“[C]laims, which merely require generic computer implementation, fail to
transform [an] abstract idea into a patent-eligible invention.”).
Therefore, because the claims fail to satisfy both the Step 2A and Step
2B analyses, we sustain the Examiner’s § 101 rejection of independent
claims 1 and grouped claims 2–5, 7–21, 23–29, and 31–33, not argued
separately, and which fall therewith. See Claim Grouping, supra.
CONCLUSION
Claims 1–5, 7–21, 23–29, and 31–33 under 35 U.S.C. § 101 are
directed to patent-ineligible subject matter, and we sustain the rejection.
DECISION
We affirm the Examiner’s decision rejecting claims 1–5, 7–21, 23–29,
and 31–33.
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