Berry, Megan C. et al.

Patent Trials and Appeals Board

Oct 2, 2020

13495604 - (D) (P.T.A.B. Oct. 2, 2020)

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.
13/495,604 06/13/2012 Megan C. Berry 880417-0117-US00 6936
134795 7590 10/02/2020
MICHAEL BEST & FRIEDRICH LLP (DC)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
PURI, VENAY
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
10/02/2020 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 MEGAN C. BERRY, HERBERT F. FRYMARK JR, FELIX G.
MEALE, ERIC ROSENBLATT, and DWAYNE D. SEEGARS
____________

Appeal 2019-002716
Application 13/495,604
Technology Center 3600
____________

Before BRUCE T. WIEDER, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–5, 7, 10–12, and 14–17. An oral hearing in this appeal
was held on May 11, 2020. We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed Aug. 14, 2018) and Reply Brief (“Reply Br.,” filed Feb. 21, 2019), and
the Examiner’s Answer (“Ans.,” mailed Dec. 21, 2018), and Final Office
Action (“Final Act.,” mailed Dec. 29, 2017). Appellant identifies Fannie
Mae as the real party in interest. Appeal Br. 2.
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We AFFIRM, designating the affirmance as a NEW GROUND OF
REJECTION, pursuant to 37 C.F.R. § 41.50(b).
CLAIMED INVENTION
The claimed invention “relates generally to an automated valuation
mode (AVM) to rank and display comparables for a subject property, and
more particularly to including and excluding comparables from displayed
rankings.” Spec. ¶ 1.
Claims 1 and 12 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method of determining rankings for comparable
properties, the method comprising:
[(a)] accessing, by a computer, property data
corresponding to a set of properties within a geographic area;
[(b)] applying, by the computer, a comparable selection
model to the property data to generate a set of comparable
properties based on a subject property;
[(c)] generating, by the computer, a first ranking that
ranks the set of comparable properties based on similarity of the
set of comparable properties to the subject property, the first
ranking being generated according to results of an application of
the comparable selection model;
[(d)] altering, by the computer, the set of properties to
produce a first altered set of properties;
[(e)] altering, by the computer, the first altered set of
properties based on input from a user to produce a second altered
set of properties and applying the comparable selection model to
the second altered set of properties to generate an updated set of
comparable properties, the input from the user comprising a map
adjustment corresponding to the geographic area that produces
an updated geographic area, the updated set of comparable
properties being automatically generated in accordance with the
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updated geographic area resulting from the map image
adjustment;
[(f)] generating, by the computer, a second ranking that
ranks the updated set of comparable properties based on the
similarity of the updated set of comparable properties to the
subject property, the second ranking being generated according
to another application of the comparable selection model that is
separate from the application of the comparable selection model
used to generate the first ranking;
[(g)] determining a set of value adjustments based on
differences in explanatory variables between the subject property
and each of a plurality of comparable properties in the second
altered set of properties after the set of comparable properties is
determined and altered to produce the second altered set of
properties; and
[(h)] displaying a list of the updated set of comparable
properties, including the first ranking and the second ranking for
each property in the list, wherein
[(i)] the comparable selection model utilizes a hedonic
regression and applies exclusion rules to the property data.

REJECTIONS
Claims 1–5, 7, 10–12, and 14–17 are rejected under 35 U.S.C. § 101
as directed to a judicial exception without significantly more.
Claims 1–3, 7, 10–12, 14, and 15 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kim (US 2005/0154657 A1, pub. July 14,
2005), Smintina (US 2012/0158748 A1, pub. June 21, 2012), and Hong
(US 2013/0218864 A1, pub. Aug. 22, 2013).
Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kim, Smintina, Hong, and Villena (US 2006/0218005 A1, pub. Sept. 28,
2006).
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Kim, Smintina, Hong, and Dugan (US 5,857,174, iss. Jan. 5, 1999).
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Claims 16 and 17 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kim, Smintina, Hong, and Dupray (US 2010/0063829 A1,
pub. Mar. 11, 2010).
ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues the pending claims as a group. Appeal Br. 15–26.
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
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566 U.S. at 79, 78). This is “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.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to “transmitting a set of categorized
collected data of properties.” Final Act. 8–9; see also Ans. 7. The Examiner
found that this concept is analogous to concepts of “gathering intangible
data,” “analyzing collected information,” and “transmitting a set of
categorized collected data of properties,” a combination of concepts that the
courts have determined to be abstract ideas. Final Act. 9. The Examiner
also determined that the claims do not include additional elements,
considered individually and as an ordered combination, sufficient to amount
to significantly more than the abstract idea itself. Id. at 9– 10; see also Ans.
7–10.
After Appellant’s Appeal Brief was filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “Revised
Guidance”). That guidance revised the USPTO’s examination procedure
with respect to the first step of the Mayo/Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The Revised Guidance, by its terms, applies to all
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applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.2,3
Step One of the Mayo/Alice Framework (Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the Revised Guidance (i.e., Step 2A), is a two-prong test; in
Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. Revised Guidance, 84 Fed.
Reg. at 54. If so, we next consider whether the claim includes additional
elements, beyond the judicial exception, that “integrate the [judicial]
exception into a practical application,” i.e., that apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the

2 The Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance
issued prior to the Ninth Edition, R-08.2017, of the MPEP (published Jan.
2018) should not be relied upon.”). Accordingly, Appellant’s arguments
challenging the sufficiency of the Examiner’s rejection will not be addressed
to the extent those arguments are based on now superseded USPTO
guidance.
3 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (hereinafter “October
2019 Update”) clarifying the Revised Guidance in response to comments
received from the public.
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judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
We are not persuaded here that the Examiner failed to identify an
abstract idea, overgeneralized the claim language, or otherwise erred in
determining that claim 1 is directed to an abstract idea. See Appeal Br. 16–
17. The Federal Circuit has explained that “the ‘directed to’ inquiry applies
a stage-one filter to claims, considered in light of the specification, based on
whether ‘their character as a whole is directed to excluded subject matter.’”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific
improvement in relevant technology or on a process that itself qualifies as an
“abstract idea” for which computers are invoked merely as a tool. See id.
at 1335–36. Here, it is clear from the Specification (including the claim
language) that claim 1 focuses on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is titled “A SYSTEM AND METHOD FOR
INCLUDING AND EXCLUDING SPECIFIC COMPARABLES,” and
describes, in the Background section, that conventional automated valuation
models (AVMs), which estimate property values, have been based upon
predetermined, fixed, inflexible geographical data sets. Spec. ¶¶ 2, 4. The
geographical data set defines a neighborhood for the real estate valuation.
Id. ¶ 3. Therefore, an incorrectly defined neighborhood (or geographical
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area) misses relevant comparable sales and/or includes irrelevant
comparable sales, causing inaccurate valuations. Id. Appellant describes
that instead of “fixed geographical standards to define the area subject to
automated valuation,” AVM systems need to “accommodate a more tailored
approach to property value estimations.” Id. ¶ 4.
The claimed invention is intended to address this shortcoming.
Claim 1, thus, recites a method of determining rankings for comparable
properties comprising: “accessing . . . property data corresponding to a set
of properties within a geographic area” (step (a)); “applying . . . a
comparable selection model to the property data to generate a set of
comparable properties based on a subject property” (step (b)); generating . . .
a first ranking that ranks the set of comparable properties based on similarity
of the set of comparable properties to the subject property, the first ranking
being generated according to results of an application of the comparable
selection model” (step (c)); “altering . . . the set of properties to produce a
first altered set of properties” (step (d));
altering . . . the first altered set of properties based on input
from a user to produce a second altered set of properties and
applying the comparable selection model to the second altered
set of properties to generate an updated set of comparable
properties, the input from the user comprising a map adjustment
corresponding to the geographic area that produces an updated
geographic area, the updated set of comparable properties being
. . . generated in accordance with the updated geographic area
resulting from the map image adjustment [(step (e))];
generating . . . a second ranking that ranks the updated set
of comparable properties based on the similarity of the updated
set of comparable properties to the subject property, the second
ranking being generated according to another application of the
comparable selection model that is separate from the application
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of the comparable selection model used to generate the first
ranking [(step (f))];
determining a set of value adjustments based on
differences in explanatory variables between the subject property
and each of a plurality of comparable properties in the second
altered set of properties after the set of comparable properties is
determined and altered to produce the second altered set of
properties [(step (g))]; and
displaying a list of the updated set of comparable
properties, including the first ranking and the second ranking for
each property in the list [(step (h))], wherein
the comparable selection model utilizes a hedonic
regression and applies exclusion rules to the property data
[(step (i))].
These limitations, when given their broadest interpretation, recite a
method for ranking comparable properties. The concept of “ranking
comparable properties,” as set forth above by limitations (a) through (i) of
claim 1, pertains to sales activities or behaviors (i.e., a commercial
interaction), which is one of the certain methods of organizing human
activity and, therefore, an abstract idea. See Revised Guidance, 84 Fed. Reg.
at 52.
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
Beyond the abstract idea, claim 1 recites a “computer” for performing
steps (a)–(f), and “automatically” generating the updated set of comparable
properties based on a “map image adjustment” from the user. However,
Appellant’s Specification makes clear that the claimed invention is
implemented using generic computer components to perform generic
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computer functions. See, e.g., Spec. ¶¶ 29–31. For example, the
Specification describes that the “functions described herein may be
implemented on any conventional computing or electronic device.” Spec.
¶ 29; see also id. (“Any computer system . . . may be used”.). Consistent
with this disclosure, the Specification describes the map image adjustment
and automatic generation of an updated set of properties at a high level of
generality. See, e.g., Spec. ¶ 24 (identifying various generic computer
technologies for performing the recited functionality). For example, the
Specification provides that the “user adjusts the map through a scrolling
feature, click-zoom feature, or data entry feature (such as entering a zip code
or city), [and] the altered comparable property set automatically changings
in accordance with the new geographic area displayed on the map image.”
Id. In another example, the user directly selects individual properties from a
map image to include or exclude in the updated property set. Id. In yet
another example, the “user creates or defines a boundary through a default
shape tool, a free-hand sketch tool, or a combination of both.” Id. The user
also could use a generic “drawing tool” to form shapes over the map image.
Id.
We find no indication in the Specification that the operations recited
in claim 1 require any specialized computer hardware or other inventive
computer components, i.e., a particular machine, invoke any allegedly
inventive programming, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation
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of generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the claimed
invention integrates the abstract idea into a “practical application,” as that
phrase is used in the Revised Guidance.4
Appellant argues that the § 101 rejection cannot be sustained because
“claim 1 entails the automatic updating of a comparable listing based upon
map image manipulation by the user.” Appeal Br. 21. Then, the updated
comparable listing is ranked and the display updates accordingly. Id.
Appellant contends that these claim limitations are “necessarily rooted in
computer technology,” and the claimed invention “overcomes problems
arising from prior user interfaces.” Id.; see also Reply Br. 15.
Yet, contrary to Appellant’s arguments in the Appeal Brief,
Appellant’s Specification does not describe the solution as necessarily
rooted in technology or the problem as a technological problem. Instead,
Appellant’s Specification describes the invention as seeking to solve a real

4 The Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. Revised Guidance, 84 Fed. Reg. at 55. If
the recited judicial exception is integrated into a practical application, as
determined under one or more of these MPEP sections, the claim is not
“directed to” the judicial exception.
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estate challenge: accurately defining a neighborhood, or geographic area,
for relevant comparable sales to include in a real estate valuation. Spec. ¶ 4.
Put simply, here, the “improvement” is to better define the data set being
operated on by allowing the user to adjust a map. And “[a]s many cases
make clear, 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 Am., 898
F.3d at 1168.
Appellant further contends that “other aspects of the claim recite
improvements in computer technology.” Appeal Br. 22; see also Reply
Br. 15. In this regard, Appellant contends that claim is rooted “in computer
technology in order to overcome a problem specifically arising in relation to
altering the property characteristics and comparable property lists,
generating rankings, and using hedonic regression.” Appeal Br. 22.
Appellant asserts that claim 1 is a “technically grounded process that
actually provides the requisite computer improvements, providing more
efficient and superior results.” Id.; see also id. at 23 (charging that the
Examiner erred in discounting the claimed features as analyzing gathered
data, and not considering the claim as a whole); see also Reply Br. 15.
Yet, Appellant does not persuasively argue how the claimed method
improves computer functionality. In addition to the abstract idea, claim 1
recites performing steps (a) through (f) using a generic computer and
“automatically” updating an updated set of properties. However, no
improvement in computer functionality is apparent. See Customedia Techs.,
LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (“To be a
patent-eligible improvement to computer functionality, we have required the
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claims to be directed to an improvement in the functionality of the computer
or network platform itself.”).
The ordered combination of steps (a) through (i), as recited in claim 1,
may well improve a process for ranking comparable properties that results in
more efficient and superior results. However, the improvement focuses “on
selecting certain information, analyzing it using mathematical techniques,
and reporting or displaying the results of the analysis. That is all abstract.”
SAP Am., Inc., 898 F.3d at 1167.
We also are not persuaded that there is any parallel between claim 1
and the claims at issue in McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299 (Fed. Cir. 2016). Appeal Br. 23–25. Appellant asserts that
the Federal Circuit in McRO “held that ‘[t]he claimed process uses a
combined order of specific rules that renders information into a specific
format that is then used and applied to create desired results’” Appeal Br. 23
(quoting McRO, 837 F.3d at 1315). Appellant argues that claim 1, like the
claims at issue in McRO,
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.
Id. at 24.
Yet, the Federal Circuit did not premise its determination that the
claim in McRO was patent eligible merely on the specificity of the claimed
animation scheme. Instead, the court determined that the claim at issue was
patent eligible because, when considered as a whole, the claim was directed
to a technological improvement over existing, manual 3-D animation
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techniques and used limited rules in a process specifically designed to
achieve an improved technological result in conventional industry practice.
See McRO, 837 F.3d at 1316. In particular, the Federal Circuit found that
the claimed rules allow computers to produce accurate and realistic lip
synchronization and facial expressions in animated characters that
previously could only be produced by human animators. Id. at 1313.
Here, an updatable ranked listing of comparable properties with
separate and distinct applications of a valuation model, may well improve a
business process, i.e., determining rankings for comparable properties.
However, we are not persuaded that it achieves an improved technological
result analogous to that obtained in McRO.
Contrary to Appellant’s assertion, we also find no parallel here
between claim 1 and the patent-eligible claim 1 in Example 37 of the
USPTO’s “Subject Matter Eligibility Examples: Abstract Ideas,” available at
https://www.uspto.gov/sites/default/files/documents/
101_examples_37to42_20190107.pdf (hereinafter “Eligibility Examples”).
Reply Br. 16–17. Appellant argues that claim 1, like claim 1 of Example 37,
recites “a specific manner to better determine property valuation and provide
rankings for separate instances of property valuation corresponding to
updated property sets, as well as a corresponding graphical user interface
that displays the information concurrently.” Id. at 17.
As noted by Appellant, claim 1 of Example 37 involves
“automatically moving the most used icons to a position on the GUI closest
to the start icon of the computer system based on the determined amount of
use.” Appeal Br. 17; see also Eligibility Examples, 2. This is easily
distinguished from Appellant’s claim 1, which does not recite a user
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interface, much less an interface with a specific manner of functioning that
results in an improved user interface for electronic devices. See Eligibility
Examples 2–3. At best, claim 1 suggests using a generic user interface in its
ordinary capacity for receiving “input from the user comprising a map
adjustment” (step (e)) and “displaying a list of the updated set of the updated
set of comparable properties” (step (h)). Our understanding is supported by
the Specification. See Spec. ¶ 47 (describing interfaces as “any interface
suited for input and output of communication data”); see also id. ¶ 24
(describing generic functions that can be used to update the map image).
We also are not persuaded of Examiner error by Appellant’s argument
regarding preemption. Appeal Br. 19–20. There is no dispute that the
Supreme Court has described “the concern that drives [the exclusion of
abstract ideas from patent-eligible subject matter] as one of pre-emption.”
Alice Corp., 573 U.S. at 216. Yet, as Appellant, in fact, acknowledges (see
Reply Br. 11–12), characterizing preemption as a driving concern for patent
eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption
may signal patent ineligible subject matter [but] the absence of complete
preemption does not demonstrate patent eligibility.” Id.
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim are no more than generic computer
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components used as tools to perform the recited abstract idea. As such, they
do not integrate the abstract idea into a practical application. See Alice
Corp., 573 U.S. at 223–24 (“[W]holly 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.’” (quoting Mayo, 566 U.S. at 77)).
Accordingly, we agree with the Examiner that claim 1 is directed to an
abstract idea.
Step Two of the Mayo/Alice Framework (Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
Revised Guidance, the second step of the Mayo/Alice framework, whether
claim 1 includes additional elements or a combination of elements that
provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself. Revised
Guidance, 84 Fed. Reg. at 56. As stated in the Revised Guidance, many of
the considerations to determine whether the claims amount to “significantly
more” under step two of the Alice framework have been considered as part
of determining whether the judicial exception has been integrated into a
practical application. Id. Thus, at this point of our analysis, we determine if
the claims add a specific limitation, or combination of limitations, that is not
well-understood, routine, conventional activity in the field, or simply
appends well-understood, routine, conventional activities at a high level of
generality. Id.
On the record before us, claim 1 fails to recite specific limitations (or
a combination of limitations) that are not well-understood, routine, and
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conventional. Rather, the additional elements (i.e., generating the updated
set of comparable properties “automatically”; a computer) are generic
computer components and actions recited at a high level of generality, none
of which Appellant persuasively argues is beyond what was well-
understood, routine, and conventional in the art.
Citing the Federal Circuit’s decision in Berkheimer v. HP Inc., 881
F.3d 1360 (Fed. Cir. 2018), Appellant argues that the § 101 rejection is
deficient, and should be reversed, because the “Examiner’s bald assertions
that the additional elements in the pending claims are well-understood,
routine, and conventional is improper.” Appeal Br. 18. Appellant takes the
position here that the inventive concept is the combination of claimed
features, i.e., the claimed invention itself; and Appellant argues that the
§ 101 rejection cannot be sustained because the Examiner has offered no
evidence that this “inventive concept” is well-understood, routine and
conventional. See id. at 17–19. Yet, “the relevant inquiry [under step two of
the Mayo/Alice framework (i.e., step 2B)] is not whether the claimed
invention as a whole is unconventional or non-routine.” BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). Instead, the
question is whether the claim includes additional elements, i.e., elements
other than the abstract idea itself, that “‘transform the nature of the claim’
into a patent-eligible application.” Alice Corp., 573 U.S. at 217 (quoting
Mayo, 566 U.S. at 79, 78). Here, Appellant does not identify any additional
elements (i.e., elements that are not part of the abstract idea), considered
individually or in combination, that are sufficient to amount to significantly
more than the judicial exception. Therefore, Appellant’s argument is
unpersuasive.
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18
To the extent Appellant maintains that claim 1 is patent eligible
because the claim is novel and/or non-obvious, Appellant misapprehends the
controlling precedent. Appeal Br. 19 (arguing that “the prior art fails to
disclose, even in combination, various features recited in Appellant’s
claim 1”). Neither a finding of novelty nor a non-obviousness determination
automatically leads to the conclusion that the claimed subject matter is
patent eligible. A novel and non-obvious claim directed to a purely abstract
idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 1, and claims 2–5, 7, 10–12, and
14–17, which fall with claim 1. Because our rationale differs from the
Examiner, we designate our affirmance as a new ground of rejection.
Obviousness
Independent Claims 1 and 12, and Dependent Claims 3, 5–15, and 17
Claim 1 calls for generating a first ranking that ranks a set of
comparable properties within a geographic area (limitations (a)–(c)), altering
the set of properties to produce a first altered set of properties
(limitation (d)), altering the first altered set of properties produce a second
altered set of properties, where the user makes a map image adjustment to
generate the updated geographic area (limitation (e)), generating a second
ranking that ranks the updated set of comparable properties (limitation (f)),
and displaying a list of an updated set of comparable properties, including a
first ranking and a second ranking for each property in the list
(limitation (h)). Claim 12 recites similar language.
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We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1 and 12 under 35 U.S.C. § 103(a) because
neither Kim nor Smintina, individually or in combination, discloses or
suggests
altering, by the computer, the first altered set of properties
based on input from a user to produce a second altered set of
properties and applying the comparable selection model to the
second altered set of properties to generate an updated set of
comparable properties, the input from the user comprising a map
adjustment corresponding to the geographic area that produces
an updated geographic area, the updated set of comparable
properties being automatically generated in accordance with the
updated geographic area resulting from the map image
adjustment [limitation (e)];
generating, by the computer, a second ranking that ranks
the updated set of comparable properties based on the similarity
of the updated set of comparable properties to the subject
property, the second ranking being generated according to
another application of the comparable selection model that is
separate from the application of the comparable selection model
used to generate the first ranking [limitation (f)];

and “displaying a list of the updated set of comparable properties including
the first ranking and the second ranking for each property in the list
[limitation (h)],” as recited in claim 1, and similarly recited in claim 12. See
Appeal Br. 7–13; see also Reply Br. 2–10.
The Examiner relies on Kim for limitations (f) and (h), and a
combination of Kim and Smintina for limitation (e), as recited in claim 1,
and similarly recited in claim 12. Final Act. 11–13 (citing Kim ¶¶ 35, 41,
47, 48, 51, Figs. 6, 8; Smintina ¶¶ 42, 55)), 16. Specifically, the Examiner
correctly acknowledges that Kim “does not teach adjusting rankings based
on a map adjustment.” Final Act. 13. However, as set forth above, claims 1
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20
and 12 require more than adjusting a map and ranking properties.
Additionally, the claims call for the user’s manipulation of the map to
generate an updated set of comparable properties (a subset of the set of
properties ranked by a first ranking), generate a second ranking of the
updated set of comparable properties, and display the updated set of
properties including both the first ranking from the set of properties and the
second ranking from the updated set of properties. Because Kim does not
teach creating a subset of data (i.e., updating the set of comparable
properties), Kim also fails to teach the limitations, described above, that act
upon both the set of data and its subset. Smintina does not cure the
deficiencies.
The Examiner relies on Smintina to teach “map adjustment to adjust
rankings of real estate properties.” Final Act. 13; see also id. at 12 (citing
Smintina ¶¶ 42, 55). Smintina at paragraph 42 teaches that a “certain radius
relative to a known place” can be used to “allow[] a user to identify
properties on a map.” Paragraph 55 of Smintina discloses that “[t]he object
market represents a local real estate market including but not limited to city,
zip code, a given customizable radius or polygon area, and so on.” Thus,
while Smintina teaches customizing a geographical area for a set of
properties, Smintina, like Kim, fails to teach creating a subset of properties
in a geographic area by a map manipulation (i.e., an updated set of
properties), generating a first ranking based on the set of properties and a
second ranking based on the subset, much less displaying a list of properties
in the subset, including both the first ranking and second ranking for each
property in the subset, as called for in claims 1 and 12.
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In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1 and 12 under 35 U.S.C. § 103(a), and dependent
claims 2, 3, 7, 10, 11, 14, and 15.
Dependent Claims 4, 5, 16, and 17
The additional art relied on in the rejections of claims 4, 5, 16, and 17
under 35 U.S.C. § 103(a) does not cure the deficiencies in the Examiner’s
rejection of the independent claims. Therefore, we do not sustain the
Examiner’s rejections of dependent claims 4, 5, 16, and 17 for the same
reasons set forth above with respect to the independent claims.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)
/Basis
Affirmed Reversed New
Ground
1–5, 7,
10–12,
14–17
101 Eligibility 1–5, 7,
10–12,
14–17
1–5, 7,
10–12,
14–17
1–3, 7,
10–12, 14,
15
103(a) Kim,
Smintina,
Hong
1–3, 7,
10–12, 14,
15

4 103(a) Kim,
Smintina,
Hong,
Villena
4
5 Kim,
Smintina,
Hong,
Dugan
5
16, 17 Kim,
Smintina,
16, 17
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Claims
Rejected
35
U.S.C. §
Reference(s)
/Basis
Affirmed Reversed New
Ground
Hong,
Dupray
Overall
Outcome
1–5, 7,
10–12,
14–17
1–5, 7,
10–12,
14–17
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record. The request for rehearing must
address any new ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
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).
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AFFIRMED; 37 C.F.R. § 41.50(b)