Alexei Kisselev et al.Download PDFPatent Trials and Appeals BoardMay 19, 202012926896 - (D) (P.T.A.B. May. 19, 2020) 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. 12/926,896 12/16/2010 Alexei M. Kisselev 880417-0106-US00 8235 134795 7590 05/19/2020 MICHAEL BEST & FRIEDRICH LLP (DC) 790 N WATER ST SUITE 2500 MILWAUKEE, WI 53202 EXAMINER YOUNG, MICHAEL C ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 05/19/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): DCipdocket@michaelbest.com nbenjamin@michaelbest.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ALEXEI M. KISSELEV, YONG CHEN, ERIC ROSENBLATT, MEGAN C. BERRY, and PATRIA S. KUNDE Appeal 2019-006645 Application 12/926,896 Technology Center 3600 Before MICHAEL J. STRAUSS, ADAM J. PYONIN, and MICHAEL M. BARRY, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s rejection. 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(a). Appellant identifies the real party in interest as Fannie May. Page 2 of Appeal Brief in Response to Notice of Non-Compliant Brief filed March 12, 2019 (“Appeal Br.”). Appeal 2019-006645 Application 12/926,896 2 STATEMENT OF THE CASE Introduction The Application is directed to “estimat[ing] the market value of a single family home” by “model[ing] comparable properties and render[ing] map images and associated information useful for analyzing comparable properties.” Spec. ¶¶ 3, 16. Independent claims 1, 13, and 20 are the only pending claims. Appeal Br. 25–28. Claim 1 is reproduced below for reference (emphasis added): 1. A method for modeling appropriate comparable properties, the method comprising: accessing, by a processing unit, property data corresponding to a geographical area; performing, by the processing unit, a regression based upon the property data, the regression modeling the relationship between price and explanatory variables, wherein the explanatory variables include property characteristics variables, a time variable and a location variable; identifying a subject property and a plurality of comparable properties; for each of the comparable properties, determining, by the processing unit, value adjustments that respectively correspond to each of the explanatory variables based upon differences in values for the explanatory variables between the subject property and each respective one of the comparable properties; determining, by the processing unit, an economic distance between the subject property and each of the plurality of comparable properties, the economic distance constituted as a single quantified value determined from respective proportional contributions of each of the value adjustments corresponding to the explanatory variables for each respective comparable property; weighting the plurality of comparable properties based upon the appropriateness of each of the plurality of comparable properties as comparables for the subject property, the weighting being calculated according to a single function wherein the Appeal 2019-006645 Application 12/926,896 3 weighting is inversely proportional to each of the economic distance from the subject property, geographic distance from the subject property, and age of transaction; displaying a map image corresponding to the geographical area, wherein the map image includes a first indicator type indicative of the subject property and a second indicator type indicative of a subset of the plurality of comparable properties, the subset being determined from the weighting of the plurality of comparable properties; and displaying a text listing that includes entries for the subject property and the subset of the plurality of comparable properties concurrently with displaying the map image. References and Rejections Claims 1, 13, and 20 are rejected under 35 U.S.C. § 101 as being patent ineligible. Final Act. 10. Claims 1, 13, and 20 are rejected under 35 U.S.C. § 103(a) as being obvious in view of Robbins (US 2001/0039506 A1; Nov. 8, 2001), Kim (US 2005/0154657 A1; July 14, 2005), and Ramer (US 2007/0073717; Mar. 29, 2007). Final Act. 16. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments. Any arguments Appellant could have made but chose not to make are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We discuss each of the grounds of rejection below. Patent Eligibility The Examiner determines the claims are patent ineligible under 35 U.S.C. § 101, because the claim limitations “do not offer “significantly more” than the abstract idea itself.” Final Act. 14 (quotations omitted); see Appeal 2019-006645 Application 12/926,896 4 Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–218 (2014) (describing the two-step framework “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.”). After the mailing of the Final Action—but prior to the mailing of the Answer or the filing of the Reply Brief—the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of § 101 (“Guidance”). See 2019 Revised Patent Subject Matter Eligibility Guidance Notice, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Notice”); see also USPTO, October 2019 Update: Subject Matter Eligibility (“October Update”) (available at https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p df). “All USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” Notice, 84 Fed. Reg. at 51; see also October Update at 1. Under the 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) (“Step 2A, Prong One”); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).2 Notice, 84 Fed. Reg. at 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical 2 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See Notice - Section III(A)(2), 84 Fed. Reg. 54–55. Appeal 2019-006645 Application 12/926,896 5 application, does the Office then look, under Step 2B, to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Notice, 84 Fed. Reg. at 52–56. We agree with, and adopt as our own, the Examiner’s eligibility analysis. We add the following primarily for emphasis and clarification with respect to the Guidance. A. Step 2A, Prong One We agree with the Examiner’s determination that the claims recite the judicial exception of “certain methods of organizing human activity specifically advertising, marketing or sales activities” pursuant to Prong One of the Guidance. Ans. 6. Claim 1, for example, recites steps of accessing property data, analyzing the data, and displaying the results of the analysis. See Appeal Br. 22 (describing the claim as “a combined order of specific rules that renders information [e.g., property data, altered property, and updates based upon geographical area] into a specific format [e.g., first and second rankings of properties based upon separate instances of a comparable selection model],” “that are then used and applied to create desired results [e.g., map image updates and corresponding ranked listing updates]”). The Examiner concludes the particular limitations of claim 1 recite a judicial exception: The claim[ed] invention amounts to receiving information regarding a subject property and a plurality of comparable Appeal 2019-006645 Application 12/926,896 6 properties in order to analyze and determine differences between the subject property and the comparable properties. The invention displays a list of identified comparable properties that is most comparable to the subject property. The invention analyzes property information in order to assess differences and similarities between the properties which is similar to the abstract idea identified in the 2019 PEG in grouping “b” in that the claims are directed to certain methods of organizing human activity such as commercial or legal interactions such as marking and advertising. Ans. 8. We determine the Examiner has properly analyzed the claim limitations under Prong One of the Guidance—the Examiner has identified the specific limitations in the claim that fall within the subject matter groupings of abstract ideas enumerated in the Guidance, and has provided a reasoned explanation sufficient to support the determination. See Ans. 6–9; Notice, 84 Fed. Reg. at 54. We also agree with the Examiner that “the claims recite abstract mental processes” (Final Act. 12), as the limitations identified by the Examiner (see Final Act. 11, 12) are steps of “observation, evaluation, judgment, opinion.” Notice, 84 Fed. Reg. at 52; see also October Update at 7–9. Accordingly, we find no error in the Examiner’s determination that the claims recite a judicial exception under Prong One of the Guidance. See Notice, 84 Fed. Reg. at 54; cf. Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019) (“As a general rule, ‘the collection, organization, and display of two sets of information on a generic display device is abstract.’”) (quoting Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1345 (Fed. Cir. 2018)); Elec. Power Grp., 830 F.3d at 1354–55 (finding claim directed to the abstract idea of “collecting information, analyzing it, and displaying certain results” to be ineligible); Versata Dev. Appeal 2019-006645 Application 12/926,896 7 Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) (determining claims recite “the abstract idea of determining a price using organization and product group hierarchies”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) (“This concept of offer based pricing is similar to other fundamental economic concepts found to be abstract ideas.”) (quotations omitted); In re Villena, 745 F. App’x 374, 376 (Fed. Cir. 2018) (determining “the concept of property valuation, that is, determining a property’s market value, is a fundamental economic practice long prevalent in our system of commerce”) (quotations omitted); Move, Inc. v. Real Estate All. Ltd., 721 F. App’x 950, 954 (Fed. Cir. 2018) (determining claims recite “the abstract idea of a method for collecting and organizing information about available real estate properties and displaying this information on a digital map that can be manipulated by the user”) (quotations omitted). Accordingly, independent claim 1, and independent claims 13 and 20 which include similar limitations, recite a judicial exception under Prong One of the Guidance. See Notice, 84 Fed. Reg. at 54; see also October Update at 2. B. Step 2A, Prong Two Appellant argues claim 1 “recite[s] a practical application” by “set[ting] forth additional elements that reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field.” Reply Br. 6, 8. According to Appellant, the recited “[r]egression analysis is performed on very large datasets, where it is completely impractical to individually tweak runs in order to provide Appeal 2019-006645 Application 12/926,896 8 improved results.” Id. at 8; see also Appeal Br. 18–20. Appellant further contends claim 1 provides “an improved technical implementation and corresponding user interface improvements that provide improved identification of appropriate comparables along with an ability to review them in map-and-text b[a]sed form in an improved and more meaningful manner.” Reply Br. 9; see also Appeal Br. 20, 21. We are not persuaded the Examiner errs in determining the additional elements of claim 1 “fail[] to integrate the judicial exception into a practical application because the instant application merely recites words ‘apply it’ (or an equivalent) with the judicial exception or merely includes instructions to implement an abstract idea.” Ans. 9. The alleged “additional elements” that Appellant relies on for arguments3 under Step 2A, Prong Two are part of the abstract idea as identified by the Examiner. See Reply Br. 7, 8; Ans. 10 (“[T]he instructions entirely comprise the abstract idea.”). Appellant cannot rely solely on improvements recited by the abstract idea as providing the basis to conclude the abstract idea is integrated into a practical application. See Notice, 84 Fed. Reg. at 55 n. 24; Trading Techs. Int’l., Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019) (“The abstract idea itself cannot supply the inventive concept, no matter how groundbreaking the advance.”). Here, Appellant has not identified additional elements, individually or in combination, that integrate the exception into a practical 3 See, e.g. Appeal Br. 20 (“[T]he features of the pending claims, and in particular claim 1, include a specific process or a specific structure that provides an improved technological result, i.e., an updatable ranked listing of comparable properties with separate and distinct applications of a valuation model that is a new means for assessing and updating listings of comparable properties against a correspondingly updatable map image.”) Appeal 2019-006645 Application 12/926,896 9 application. See Notice, 84 Fed. Reg. at 54, 55. Rather, claim 1 includes a “processing unit” as an additional element, and we agree with the Examiner the claimed use of this element “amounts merely to an instruction to apply the abstract idea on the generic computing system/platform.” Ans. 11; Notice, 84 Fed. Reg. at 55. Even if we consider the disputed limitations as additional elements, we disagree with Appellant’s contentions that such limitations remove the claims from the realm of ineligible subject matter. The claimed method identifies and displays real estate properties that are similar to a subject property, which merely automates processes normally performed by realtors and others who are ordinarily skilled in the real estate arts. See Spec. ¶¶ 2– 5; Robbins ¶ 4 (“In order to estimate the market value, the real estate appraiser attempts to find recent sales that could be construed as reasonable substitutes for the subject property.”); Peter F. Colwell & Gene Dilmore, 1999, “Who Was First? An Examination of an Early Hedonic Study,” Land Economics, University of Wisconsin Press, vol. 75(4), pages 620–26. The claimed display of a text listing and map image is recited at a high level of generality, and is used to merely display the results of the analysis.4 See October Update n. 20; Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1347 (Fed. Cir. 2018) (“The asserted improvement here is the presentation of information in conjunction with other information. Such an information- based improvement is not an improvement rooted in computer technology.”) (quotations omitted); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 4 We note that, contrary to Appellant’s arguments (see, e.g. Appeal Br. 18), claim 1 does not recite that the displayed image is updated or adjusted. Appeal 2019-006645 Application 12/926,896 10 1355 (Fed. Cir. 2016) (“The claims at issue here do not require an arguably inventive device or technique for displaying information.”). Based on the foregoing, we agree with the Examiner that the elements of claim 1 do not improve the underlying or other technology, or otherwise integrate the judicial exception into a practical application. See Final Act. 3; Ans. 9; October Update at 12, 13; Customedia Techs., LLC v. Dish Network Corp., No. 2018-2239, 2020 WL 1069742, at *4 (Fed. Cir. Mar. 6, 2020) (“We have also held that improving a user’s experience while using a computer application is not, without more, sufficient to render the claims directed to an improvement in computer functionality.”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d at 1363 (“[T]he ability to automate or otherwise make more efficient traditional price-optimization methods . . . . is insufficient to render [the] claim patent eligible.”); In re Villena, 745 F. App’x at 376 (“[T]he basic steps of receiving user input, producing property valuations, and providing display information . . . . is a classic case of implementing an abstract idea on a computer.”); Move, Inc., 721 F. App’x at 956 (“While the ideas of storing available real estate properties in a database and selecting and displaying a particular geographic area may well be improvements in the identification of available real estate properties, there is no evidence that these ideas are technological improvements.”). Furthermore, we determine the specificity of the present claim is insufficient to establish patent eligibility. Cf. Alice, 573 U.S. at 222 (alterations in original) (quoting Parker v. Flook, 437 U.S. 584, 593 (1978)) (“In holding that the process was patent ineligible, we rejected the argument that ‘implement[ing] a principle in some specific fashion’ will ‘automatically fal[l] within the patentable subject matter of § 101.’”). Appeal 2019-006645 Application 12/926,896 11 Similarly, any questions on preemption in the instant case have been resolved by the analysis herein and by the Examiner. See Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (“[W]here a patent’s claims are deemed only to disclose patent ineligible subject matter under the Alice framework, as they are in this case, preemption concerns are fully addressed and made moot.”). Accordingly, we determine claim 1 does not integrate the judicial exception into a practical application. See Notice, 84 Fed. Reg. at 54. As the claim recites a judicial exception and fails to integrate the exception into a practical application, the claim is “directed to the . . . judicial exception.” Id. at 54. C. Step 2B Appellant argues “Examiner’s blanket assertions that the additional elements in the pending claims are well-understood, routine, and conventional is improper,” and “the Examiner has not expressly supported the rejection of the pending claims under 35 U.S.C. § 101 in writing with the required objective evidence.” Appeal Br. 15. We are not persuaded the Examiner errs. The Examiner reasonably determines that the additional elements recited by independent claim 1— individually and in combination—are well understood, routine, and conventional. See Final Act. 5, 6, 13–15 (citing Spec. ¶ 73); Ans. 9–11 (citing Spec. ¶¶ 73, 74); Alice, 573 U.S. at 226 (“Nearly every computer will include a ‘communications controller’ and ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”). In response, Appellant has not identified Appeal 2019-006645 Application 12/926,896 12 additional elements that amount to significantly more than the judicial exception. See, e.g., Appeal Br. 13–15; Notice, 84 Fed. Reg. at 55–56; Thus, we determine the claim limitations, individually and as an ordered combination, do not provide significantly more than the recited judicial exception. We are not persuaded the Examiner errs in determining independent claim 1 is patent ineligible. Appellant does not present additional substantive arguments on the remaining claims. See Reply Br. 10. Accordingly, we sustain the Examiner’s eligibility rejection of claims 1, 13, and 20. Obviousness Appellant argues the Examiner’s obviousness rejection is in error, because “Robbins . . . fails to disclose the weighting features that are . . . particularly-claimed by Applicant.” Appeal Br. 10. Appellant contends the Examiner finds “that Robbins and Kim make such a specific disclosure [regarding weighting] but does not actually explain where the specific disclosure is found in any reference, other than asserting by relatively large conjecture that the features are somehow present.” Reply Br. 4. Appellant further asserts that “[n]owhere does Robbins mention a weighting inversely proportional to each of the named factors,” and Kim and Ramer fail to make up for such deficiencies. Id. at 4, 5; Appeal Br. 10, 11. Claim 1 recites weighting the comparable properties, “wherein the weighting is inversely proportional to each of the economic distance from the subject property, geographic distance from the subject property, and age of transaction.” Appeal Br. 25. The Examiner finds the combination Appeal 2019-006645 Application 12/926,896 13 teaches the weighting limitation as claimed, because “the combination of Robbins and Kim teaches a regression model that provides for a quality score (a weighted value) based of various factors including economic distance, geographic distance and age of transaction (See at least Robbins: [] 137, 147, 154, 173-174, 178-179, 182, 184, 186 and 193).” Ans. 4; see Final Act. 18–26. We are persuaded the Examiner’s obviousness rejection is in error. Notably, although the Examiner relies on the combination of Robbins and Kim for the weighting limitation, the rejection fails to cite any paragraphs of Kim that teach or suggest the various factors being weighted. See Ans. 4 (citing only specific paragraphs of Robbins); Final Act. 25 (not mentioning, e.g., distance or age of a property). The Examiner cites to various paragraphs of Robbins without explaining which specific disclosures teach or suggest each claim element. See Ans. 4. Nor do we see, based on the record before us, that Robbins and Kim teach or suggest the weighting factors as claimed. Accordingly, the Examiner provides insufficient evidence to support a finding that the references teach the recited “weighting [that] is inversely proportional to each of the economic distance from the subject property, geographic distance from the subject property, and age of transaction.” See MPEP § 2142 (“[T]he examiner must provide evidence which as a whole shows that the legal determination sought to be proved (i.e., the reference teachings establish a prima facie case of obviousness) is more probable than not.”). We are persuaded the Examiner errs in rejecting independent claim 1 as obvious in view of the cited references. Independent claims 13 and 20 Appeal 2019-006645 Application 12/926,896 14 recite similar limitations. See Final Act. 16. Accordingly, we do not sustain the Examiner’s obviousness rejection of independent claims 1, 13, and 20. DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis/Reference(s) Affirmed Reversed 1, 13, 20 101 Eligibility 1, 13, 20 1, 13, 20 103 Robbins, Kim, Ramer 1, 13, 20 Overall Outcome 1, 13, 20 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation