David J. Edmondson et al.

Patent Trials and Appeals Board

Aug 1, 2019

14519657 - (D) (P.T.A.B. Aug. 1, 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.
14/519,657 10/21/2014 David J. Edmondson 8776-003 6804
153320 7590 08/01/2019
FBFK
9 Greenway Plaza, Suite 500
Houston, TX 77046
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
08/01/2019 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):
docketing@fbfk.law
jhathaway@fbfk.law
rlord@fbfk.law
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID J. EDMONSON and BIJU NAIR

____________

Appeal 2018-005100
Application 14/519,657
Technology Center 3600
____________

Before ST. JOHN COURTENAY III, JENNIFER L. McKEOWN, and
JASON J. CHUNG, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 24–43, which are all the claims pending in this application.1 Claims
1–23 are canceled. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.

1 The real party in interest is Hyla, Inc. App. Br. 1.
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STATEMENT OF THE CASE2
Disclosed embodiments of Appellants’ invention relate to “systems
and methods that provide for the reclamation of residual value of personal
electronic devices.” Spec. ¶ 2.

Illustrative Claim
24. A method to initiate mobile device trade-in, the method
comprising:

gathering information about a mobile device via an
application on the mobile device, wherein gathering the
information comprises:

automatically determining first information stored locally
on the mobile device, wherein the first information comprises
information on usage, model, and age of the mobile device;

automatically identifying one or more diagnostic tests to
perform via the application on the mobile device based on the
determined first information, wherein at least one of the
diagnostic tests analyzes screen pixels, screen touch, screen
surface, GPS, and accelerometer of the mobile device; and

performing one or more of the identified diagnostic tests
to determine second information based on the results of one or
more of the performed diagnostic tests, wherein the second
information comprises identification of one or more
components to repair;

2 We herein refer to the Final Office Action, mailed Feb. 22, 2017 (“Final
Act.”); Appeal Brief, filed Nov. 22, 2017 (“App. Br.”); Examiner’s Answer,
mailed Feb. 8, 2018 (“Ans.”); and the Reply Brief, filed April 9, 2018
(“Reply Br.”).
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wherein the gathered information includes at least a
portion of the first information and the second information,
transmitting the gathered information to a server;

initiating a trade-in value calculation based upon an event
related to a mobile device;

receiving first data related to the mobile device from one
or more servers configured to interact with one or more external
data sources, [L1] wherein the first data comprises internal
metrics related to return rates of other mobile devices that
are the same model as the mobile device and data from repair
websites related to repair rates and costs of other mobile
devices that are the same model as the mobile device;

retrieving second data from the analytic database,
wherein the second data comprises at least one of model
specific data of the mobile device or device specific data of the
mobile device;

[L2] receiving, from the server, a listing of statuses of
components to repair of the mobile device and impact of the
statuses on the trade-in value;

[L3] determining a trade-in value for the mobile device
based upon the gathered information, the first data, the second
data, impact of statuses on the trade-in value;

wherein the trade-in value includes a list of components
that decrease trade-in value and an amount that each of the
components decreases the trade-in value; and

transmitting the trade-in value to the mobile device via
the application on the mobile device.

App. Br. Claims Appendix (Emphases added regarding contested limitations
[L1], [L2] and [L3] under 35 U.S.C. § 103).
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Rejections
A. Claims 24–43 are rejected under 35 U.S.C. § 112(a), first
paragraph as failing to comply with the written description and enablement
requirements. Final Act. 2–8.
B. Claims 24–43 are rejected under 35 U.S.C. § 101 as being directed
to a judicial exception, without significantly more. Final Act. 8.
C. Claims 24–29, 32, 39 and 40 are rejected under 35 U.S.C. § 103 as
being obvious over the combined teachings and suggestions of Bowles et al.
(US 8,195,511 B2; filed Oct. 2, 2009 (“Bowles”)), Sullivan
(US 2013/0246212 A1; pub. Sept. 19, 2013 (“Sullivan”)), Woolridge et al.
(US 2012/0029947 A1; pub. Feb. 2, 2012 (“Woolridge”)), Gauthier et al.
(US 2010/0161397 A1; pub. June 24, 2010 (“Gauthier”)), and Kelly Blue
Book (pub. Dec. 17, 2013; (“KBB”)). Final Act. 30.
D. Claims 31 and 42 are rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of Bowles, Sullivan,
Woolridge, Gauthier, KBB, and FitzGerald et al. (US 2006/0178933 A1;
pub. Aug. 10, 2006; (“FitzGerald”)). Final Act. 56.
E. Claims 30, 33, 34, 41, and 43 are rejected under 35 U.S.C. § 103 as
being obvious over the combined teachings and suggestions of Bowles,
Sullivan, Woolridge, Gauthier, KBB, and Official Notice. Final Act. 60.
F. Claims 35, 37, and 38 are rejected under 35 U.S.C. § 103 as being
obvious over the combined teachings and suggestions of Bowles, Sullivan,
Woolridge, Gauthier,3 FitzGerald, and KBB. Final Act. 71.

3 We note the Examiner inadvertently omits Gauthier from the list of
references in the heading of Rejection F (Final Act. 71), but relies upon
Gauthier in the detailed statement of rejection for independent claim 35 on
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G. Claim 36 is rejected under 35 U.S.C. § 103 as being obvious over
the combined teachings and suggestions of Bowles, Sullivan, Woolridge,
Gauthier,4 FitzGerald, KBB, and Official Notice. Final Act. 97.

Issues on Appeal
1. Did the Examiner err in rejecting claims 24–43 under
35 U.S.C. § 112(a), first paragraph as failing to comply with the
written description and/or enablement requirement?
2. Did the Examiner err in rejecting claims 24–43 under 35 U.S.C. § 101
as being directed to a judicial exception, without significantly more?
3. Did the Examiner err in rejecting claims 24–43 under 35 U.S.C. § 103
as being obvious over the cited combinations of prior art?

ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(1)(iv).

page 82 of the Final Action. We have made appropriate correction to the
heading of Rejection F above.

4 Because claim 36 (rejected under Rejection G) depends directly upon
independent claim 35 (which is also rejected over Gauthier in the detailed
statement of Rejection F), it appears the Examiner has also inadvertently
omitted Gauthier from the heading of Rejection G. We have made
appropriate correction to the heading of Rejection G above.

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We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s responses to Appellants’
arguments. For essentially the same reasons argued by Appellants, as
discussed infra, we address and reverse the Examiner’s Rejection A under
35 U.S.C. § 112(a).
However, Appellants do not proffer sufficient argument or evidence to
persuade us the Examiner erred regarding the remaining Rejections B–G, for
the reasons discussed below. See Ex parte Frye, 94 USPQ2d 1072, 1075
(BPAI 2010) (precedential). In our analysis below, we highlight and
address specific findings and arguments for emphasis.

Rejection A of Claims 24 – 43 under 35 U.S.C. § 112(a)
Issue: Under 35 U.S.C. § 112(a), did the Examiner err by rejecting
claims 24–43, as failing to comply with the written description and/or
enablement requirement?
Regarding the written description requirement, the Examiner finds:
the specification, as originally filed, fails to adequately disclose
how the applicant is performing the calculation of the trade-in
value based upon the gathered information, the first data, and
the second data. Upon review of the specification, the
Examiner asserts that although the specification has adequately
provided flow charts and explanations with regards to the goals
and objectives of the invention, the specification fails to
adequately disclose how these goals and objectives have been
achieved or how they are specifically being performed in order
to determine the trade-in value.

[paragraph break inserted]

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To put it another way, although the specification has disclosed
the steps of collecting data, analyzing the collected data, and
determining a trade-in value, the specification fails to provide a
step by step process that lays out the specific calculation to
determine the trade-in value . Simply pointing or stating a
result is insufficient to meet the written description requirement
and has done nothing but provide a “black box” scenario,
wherein information is received into this “black box” and a
solution is determined while failing to explain or disclose the
processes, calculations, and/or analysis that are being
performed in this “black box” environment so as to achieve the
solution.
Final Act. 3 (emphases added).
[N]owhere in the claims or the specification has the applicant
provided the necessary disclosure as to the particular
algorithm the applicant was in possession of in order to allow
one skilled in the art to calculate the trade-in value. Although
one skilled in the art may be able to determine a trade-in value
for certain combinations of information, the Examiner asserts
that the scope of the claim is much broader, thereby including
combinations that one of skill in the art would not know how to
manipulate in order to arrive at a trade-in value for the phone.

Id. 5 (emphases added).
The Examiner further expands the written description rejection to
include a lack of enablement rejection, also under 35 U.S.C. § 112(a):
Although one skilled in the art would have found the invention
to be enabled because one skilled in the art, with undue
experimentation, could possibly come up with one way of
performing the required analysis, one skilled in the art would
be unable to determine how the applicant has intended for this
analysis to be performed and would, therefore, be unable to
determine if the applicant had possession of the invention.

[paragraph break inserted]

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To put it another way, one skilled in the art would be unable to
make and use the invention in the manner intended by the
applicant since the applicant has failed to provide sufficient
working examples of how the analysis and solution are
determined so as to cover the wide scope laid out by the
claimed invention and, therefore, one skilled in the art would be
unable to determine whether the applicant had possession of the
genus since insufficient species have been provided. One
skilled in the art would have found that the claimed invention
and corresponding specification is attempting to claim all
known and unknown possibilities for analyzing the collected
data in order to determine a trade-in value without providing
sufficient examples, in the specification, to allow one skilled in
the art to determine whether the applicant had possession of
such a wide scope of possibilities.
Final Act. 5–6 (emphases added).
Appellants disagree:
Appellant has described how to determine the trade-in value in
the actual words of the claim and the specification. See Appeal
Brief at pp. 1–7. Specifically, Appellant points to, for example,
Figures 2 and 3, which include flowcharts describing the
algorithm used to determine trade-in values, and their
accompanying descriptions, and Table 1 which illustrates an
embodiment in which the trade-in value and the various
deductions taken off the base trade-in value are illustrated.
Specification at para. 24. Thus, the algorithm is actually
detailed within the Application through a chart, figures, words,
and claims, as required to show possession. Additionally, the
standard is whether the application reasonably conveys to
person of ordinary skill in the art (POSITA) that the inventor
possessed these limitations or algorithm — here it would be
absurd to allege that a POSITA would not be able to subtract
deductions from a base value or code a program to do so. A
POSITA could easily gleen [sic] that the inventors possessed
the claimed features from the flowcharts, the descriptions of
retrievals, web crawlers, and detailed information used in the
determination of the trade-in value. Additionally, there is no
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undue experimentation standard linked to written description,
unlike as alleged by the Examiner. FOA at pp. 5–7.
Accordingly, all pending claims satisfy the written description
requirement under Section 112.
App. Br. 10–11 (emphasis added).
We note the first paragraph of 35 U.S.C. § 112 contains a written
description requirement that is separate and distinct from the enablement
requirement. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1340 (Fed. Cir. 2010) (en banc).

Written Description under 35 U.S.C. § 112 (a)
To satisfy the written description requirement, the specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir.
1991). Specifically, the specification must describe the claimed invention in
a manner understandable to a person of ordinary skill in the art and show
that the inventor actually invented the claimed invention. Id. at 1562–63;
Ariad, 598 F.3d at 1351.
The written description requirement of 35 U.S.C. § 112, first
paragraph applies to all claims including original claims that are part of the
disclosure as filed. Ariad, 598 F.3d at 1349. As stated by the Federal
Circuit, “[a]lthough many original claims will satisfy the written description
requirement, certain claims may not.” Ariad, 598 F.3d at 1349; see also
LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1343–46 (Fed.
Cir. 2005); Regents of the University of California v. Eli Lilly & Co., 119
F.3d 1559, 1568 (Fed. Cir. 1997). For instance, generic claim language in
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the original disclosure does not satisfy the written description requirement if
it fails to support the scope of the genus claimed. Ariad, 598 F.3d at 1350;
Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968 (Fed. Cir. 2002)
(holding that generic claim language appearing in ipsis verbis in the original
specification did not satisfy the written description requirement because it
failed to support the scope of the genus claimed); Fiers v. Revel, 984 F.2d
1164, 1170 (Fed. Cir. 1993) (rejecting the argument that “only similar
language in the specification or original claims is necessary to satisfy the
written description requirement”) (emphasis added).
In addition, original claims may fail to satisfy the written description
requirement when the invention is claimed and described in functional
language but the specification does not sufficiently identify how the
invention achieves the claimed function. Ariad, 598 F.3d at 1349 (“[A]n
adequate written description of a claimed genus requires more than a generic
statement of an invention’s boundaries.”) (citing Eli Lilly, 119 F.3d at 1568).
(emphasis added).
Enablement under 35 U.S.C. § 112 (a)
“To be enabling, the specification of a patent [application] must teach
those skilled in the art how to make and use the full scope of the claimed
invention without ‘undue experimentation.’” Genentech, Inc. v. Novo
Nordisk, A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997) (quoting In re Wright,
999 F.2d 1557, 1561 (Fed. Cir. 1993)). Determining the need for “undue
experimentation” is not “a single, simple factual determination, but rather is
a conclusion reached by weighing many” factors. In re Wands, 858 F.2d
731, 737 (Fed. Cir. 1988). Those factors (the Wands factors) include:
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(1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of
working examples, (4) the nature of the invention, (5) the state
of the prior art, (6) the relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
Id. (citing In re Forman, 230 USPQ 546, 547 (BPAI 1986)).
We understand the Examiner’s Rejection A under 35 U.S.C. § 112(a)
to be grounded on the purported lack of “a step by step process that lays out
the specific calculation to determine the trade-in value” in the original
Specification, including the original claims and original drawings. Final
Act. 3 (emphasis added).
At the outset, we note that all original claims 1–23 are canceled.
Thus, all claims 24–43 before us on appeal have been added during the
prosecution by amendment. However, Appellants point to purported support
for determining the trade-in value as found in “Figures 2 and 3, which
include flowcharts describing the algorithm used to determine trade-in
values, and their accompanying descriptions, and to Table 1 which
illustrates an embodiment in which the trade-in value and the various
deductions taken off the base trade-in value are illustrated. Specification at
para. 24.” App. Br. 10–11 (emphasis added).
Regarding the disputed “initiating a trade-in value calculation” (claim
24), we note original claim 10 broadly recites one way of making such a
calculation: “determining a trade-in value for the mobile device based upon
one or more of: the information, the first data, and the second data.”
Based upon our review of the Specification, including any tables and
drawings, we particularly note Table 1 (depicted immediately after
paragraph 61 of the Specification).
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Table 1 from Appellants’ Specification (¶ 61) is reproduced below:

Appellants’ Table 1 (shown above) depicts subtraction of specific
monetary values for operative/inoperative mobile device components

The Examiner additionally finds “one skilled in the art would be
unable to determine whether the applicant had possession of the genus since
insufficient species have been provided.” Final Act. 6 (emphasis added).
Given the identified support in the written description (e.g., Table 1,
¶ 61), we next must determine whether the scope of the functional claim
language is a genus that covers all species for performing the claimed
“determining a trade-in value.” Independent Claims 24, 35, and 39. See
Ariad, 598 F.3d at 1349.
Factors to consider include (a) whether the claim itself recites
limitations as to how the function is performed; and (b) whether the
Specification identifies a way of performing the claimed function, such as by
a specific type of microcomputer or an algorithm, that defines the scope of
the functional claim language. See LizardTech, Inc. v. Earth Resource
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Mapping, Inc., 424 F.3d 1336, 1346 (Fed. Cir. 2005) (“a patentee cannot
always satisfy the requirements of section 112, in supporting expansive
claim language, merely by clearly describing one embodiment of the thing
claimed.”); see also In re Hayes Microcomputer Prods., Inc. Patent
Litigation, 982 F.2d 1527, 1534 (Fed. Cir. 1992). Regarding factor (a), we
conclude neither independent claim 24, nor independent claims 35 and 39
recite exactly how the trade-in value calculation is determined within the
literal text of the claim.
However, we find at least Table 1 of the Specification (immediately
after paragraph 61, Specification, p. 24) discloses several species (i.e.,
different ways) for performing the purported genus (as found by the
Examiner) of “determining a trade-in value.” See Ariad, 598 F.3d at 1349
(“the specification must demonstrate that the applicant has made a generic
invention that achieves the claimed result and do so by showing that the
applicant has invented species sufficient to support a claim to the
functionally-defined genus”). Cf. with LizardTech, 424 F.3d at 1346
(“[T]he description of one method for creating a seamless DWT does not
entitle the inventor . . . to claim any and all means for achieving that
objective”).
In particular, Table 1 (as reproduced above) depicts several status
factors that may be used to determine the trade-in value. For example,
whether the memory of the device is functioning or not functioning may be
considered as a factor to increase or decrease the trade-in value of the mobile
device. Similarly, dead pixels may require a glass screen replacement, and
are a factor used in determining the trade-in value. As additional examples,
a dead charging port, and a functional “On/Off” switch will affect the trade-
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in value of the mobile device. See Table 1, Spec. p. 24.
Therefore, for at least the aforementioned reasons, we find at least
Table 1 of Appellants’ Specification provides sufficient written description
support to show possession of the claimed subject matter, as well as
sufficient information for an artisan to understand how to make and use the
claimed invention without undue experimentation (enablement).
Accordingly, for essentially the same reasons argued by Appellants (App.
Br. 9–14; Reply Br. 2–4), we are constrained on this record to reverse the
Examiner’s Rejection A under 35 U.S.C. § 112 (a) (written description and
enablement) of all claims 24–43 on appeal.

Rejection B of Claims 24 – 43 under 35 U.S.C. § 101
Issue: Under 35 U.S.C. § 101, did the Examiner err by rejecting
claims 24–43, as being directed to a judicial exception, without significantly
more?
Principles of Law — 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.
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) (quoting Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
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. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18
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(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.” (emphasis omitted)); see also Bilski v. Kappos, 561 U.S.
593, 611 (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, 561 U.S. at 611);
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 of rubber products” (Diehr, 450 U.S. at 193); “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 that “[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
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
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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. (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.”).
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.

Subject Matter Eligibility — 2019 Revised Guidance
The USPTO recently published revised guidance on the application of
35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). This
new guidance is applied in this Opinion. Under the 2019 Revised Guidance,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, mental processes,
or certain methods of organizing human activity such as a
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fundamental economic practice or managing personal behavior
or relationships or interactions between people);5 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).6 7
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. Id.
Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18.
For example, we look 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, and
conventional activities previously known to the industry,

5 Referred to as “Step 2A, Prong One” in the Revised Guidance (hereinafter
“Step 2A, prong 1”).
6 Referred to as “Step 2A, Prong Two” in the Revised Guidance (hereinafter
“Step 2A, prong 2”).

7 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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specified at a high level of generality, to the judicial exception.
8
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Because there is no single definition of an “abstract idea” under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the “abstract idea” exception includes the
following three groupings:
1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes— concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See 2019 Revised Guidance, 84 Fed. Reg. at 52.
According to the 2019 Revised Guidance, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception

8 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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(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular
article to a different state or thing — see MPEP
§ 2106.05(c); and
4. Applying or using 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
— see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses
a computer as a tool to perform an abstract idea — see
MPEP § 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use
— see MPEP 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
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2019 Revised Guidance, Step 2A, Prong One 9
The Judicial Exception
Under the 2019 Revised Guidance, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.
The Examiner concludes method claims 24–43 recite: “an abstract
idea of receiving an incentive for recycling a product, specifically receiving
a trade-in value for recycling a mobile device, which is (i) a fundamental
economic practice, (ii) a method of organizing human activities, (iii) an idea
of itself, or (iv) a mathematical relationship or formula.” Final Act. 9.
Turning to the claims, we conclude representative independent claim
24 recites the following identified types or categories of abstract ideas:
TABLE ONE
Independent Claim 24 Revised 2019 Guidance
[a] A method to initiate mobile
device trade-in, the method
comprising:

Statutory process (method).
35 U.S.C. § 101.
Trade-in values are pertinent to a
fundamental economic practice (e.g.,
a sale transaction with trade-in
credit.
[b] gathering information about a
mobile device via an application on
the mobile device, wherein
gathering the information
comprises:
Insignificant extra-solution activity,
e.g., “mere data gathering.” Rev.
Guid. 55, n.31.
[c] automatically determining first
information stored locally on the
Abstract idea, i.e., mental processes,
e.g., concepts performed in the

9 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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mobile device, wherein the first
information comprises information
on usage, model, and age of the
mobile device;
human mind including an
observation, evaluation, judgment,
opinion. Rev. Guid. 52.
[d] automatically identifying one or
more diagnostic tests to perform via
the application on the mobile device
based on the determined first
information, wherein at least one of
the diagnostic tests analyzes screen
pixels, screen touch, screen surface,
GPS, and accelerometer of the
mobile device; and

Abstract idea, i.e., mental processes.
[e] performing one or more of the
identified diagnostic tests to
determine second information based
on the results of one or more of the
performed diagnostic tests, wherein
the second information comprises
identification of one or more
components to repair;

Abstract idea, i.e., mental processes,
and/or “mathematical relationships,
mathematical formulas or equations,
mathematical calculations.” Rev.
Guid. 52.
[f] wherein the gathered information
includes at least a portion of the first
information and the second
information, transmitting the
gathered information to a server;

Abstract idea, “mathematical
relationships, mathematical formulas
or equations, mathematical
calculations.” Rev. Guid. 52.
[g] initiating a trade-in value
calculation based upon an event
related to a mobile device;

Insignificant extra-solution activity.
Rev. Guid. 55, n.31.
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[h] receiving first data related to the
mobile device from one or more
servers configured to interact with
one or more external data sources,
[L1] wherein the first
data comprises internal metrics
related to return rates of other
mobile devices that are the same
model as the mobile device and data
from repair websites related to
repair rates and costs of other
mobile devices that are the same
model as the mobile device;

Insignificant extra-solution activity.
Rev. Guid. 55, n.31.
[i] [L2] receiving, from the server, a
listing of statuses of components to
repair of the mobile device and
impact of the statuses on the trade-
in value;

Insignificant post-solution activity.
Rev. Guid. 55, n.31.
[j] [L3] determining a trade-in
value for the mobile device based
upon the gathered information, the
first data, the second data, impact
of statuses on the trade-in value;

Trade-in values are pertinent to a
fundamental economic practice (e.g.,
a sale transaction with trade-in
credit.

Abstract idea, “mathematical
relationships. Rev. Guid. 52.
[k] wherein the trade-in value
includes a list of components that
decrease trade-in value and an
amount that each of the components
decreases the trade-in value; and

Trade-in values are pertinent to a
fundamental economic practice (e.g.,
a sale transaction with trade-in
credit.

Abstract idea, “mathematical
relationships. Rev. Guid. 52.
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[l] transmitting the trade-in value to
the mobile device via the
application on the mobile device.

Insignificant post-solution activity.
Rev. Guid. 55, n.31.

Thus, we conclude independent method claim 24 recites an abstract
idea, i.e., certain methods of organizing human activities — the fundamental
economic practice of transactions in which trade-in values are determined.
In addition, mental processes and mathematical concepts are mapped above
in Table 1. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
We note the additional non-abstract limitations of generic computer
components: “a mobile device” and “a server” (claims 24) and “one or more
servers” (independent claim 39). Likewise, the “user” recited in dependent
claim 29 is a person, which is not an abstract idea. See 2019 Revised
Guidance, 84 Fed. Reg. at 52. We note McRO, Inc. v. Bandai Namco Games
America Inc. (837 F.3d 1299 (Fed. Cir. 2016)), guides: “[t]he abstract idea
exception prevents patenting a result where ‘it matters not by what process
or machinery the result is accomplished.’” 837 F.3d at 1312 (quoting
O’Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added).
We also note remaining independent method claims 35 and 39 recite
similar language of commensurate scope that we conclude falls into the
same abstract idea categories mapped above in Table 1 for independent
method claim 24.
Because we conclude all claims on appeal recite an abstract idea, as
identified above, under Step 2A, Prong One, we proceed to Step 2A, Prong
Two.
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2019 Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the 2019 Revised Guidance, we consider whether there
are additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Revised Guidance, 84 Fed.
Reg. at 54–55. We have identified supra the additional non-abstract
elements recited in independent claim 1 as the generic “processor and a
memory” and the “one or more users.”
Under MPEP § 2106.05(a) (“Improvements to the Functioning of a
Computer or to Any Other Technology or Technical Field”), Appellants
contend the claims amount to significantly more than an abstract idea under
MPEP § 2106.05(a) (Improvements to the functioning of a computer, or to
any other technology or technical field):
However, the claimed invention also goes even further and to
substantially improve the technological field. Specifically, the
claimed invention uses return rates, data from repair websites
related to repair rates, and a listing of statuses of components to
repair of the mobile device and impact of the statuses on the
trade-in value. These features are not currently found in the art
and hugely improve the accuracy of trade-in value.
App. Br. 18.
Appellants further contend:
By factoring in these features, as claimed, a purchaser can offer
a trade-in value that is higher to entice sellers but guard against
losses due to these factors. By providing these deductions from
a base value to a seller, a seller satisfaction may be increased.
Thus, the claimed features provide a solution to many problems
such as inaccurate information provided by sellers and
miscalculation of expected sales price due repair status impacts.
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Accordingly, the claims do provide significantly more and the
claims are directed to patentable subject matter.
App. Br. 18–19.
However, we note that an improved abstract idea is still an abstract
idea. See Mayo, 566 U.S. at 90 (holding that a novel and nonobvious claim
directed to a purely abstract idea is, nonetheless patent ineligible). Thus, we
find the additional generic limitations of claim 24 (i.e., “a mobile device”
and “a server”) do not integrate the judicial exception into a practical
application. Therefore, we conclude claim 24 does not recite: (i) an
improvement to the functionality of a computer or other technology or
technical field (see MPEP § 2106.05(a)).
Moreover, because only generic computer components such as a
mobile device and a server are recited in method claims 24–43, we conclude
these claims do not define or rely upon a “particular machine.” 10 See MPEP
§ 2106.05(b). Further, we conclude the various methods of claims 24–43 do
not transform physical subject matter to a different state or thing; at best the
claims on appeal merely transform information by determining a more
accurate estimated trade-in value for a mobile device. See MPEP
§ 2106.05(c); see also Gottschalk, 409 U.S. at 71–72 (holding that a
computer based algorithm that merely transforms data from one form to
another is not patent eligible); see also CyberSource Corp v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“The mere
manipulation or reorganization of data, however, does not satisfy the
transformation prong.”).

10 We note that all claims 24–43 on appeal are method (process) claims.
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Further regarding the Bilski machine-or-transformation test (“MoT”)
(as applicable to all method claims 24–43 on appeal), the Supreme Court
cautions that the MoT test merely provides a useful clue:
This Court’s precedents establish that the machine-or-
transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed
inventions are processes under § 101. The machine-or-
transformation test is not the sole test for deciding whether an
invention is a patent-eligible “process.”

Bilski, 561 U.S. at 604 (emphasis added).
Thus, without more, we conclude all method claims 24–43 on appeal
do not use a “particular machine” to apply or use the judicial exception (see
MPEP § 2106.05(b)); or perform a transformation of an article to a different
state or thing (see MPEP § 2106.05(c)).
We also conclude representative claim 1 has no other argued
meaningful limitations (see MPEP § 2106.05 (e)), and merely recites
instructions to execute the abstract idea on a computer or a processor (see
MPEP § 2106.05(f)).
As depicted in the right column of Table 1 above, we conclude the
claimed recitations of gathering, receiving, retrieving, and transmitting
certain information are mere data-gathering steps and thus recite the types of
extra-solution activity (i.e., in addition to the judicial exception) that courts
have determined to be insufficient to transform judicially excepted subject
matter into a patent-eligible application. See MPEP § 2106.05(g); 84 Fed.
Reg. at 55, 55, n.31; see Bancorp, 771 F. Supp. 2d at 1066, aff’d, 687 F.3d
at 1266; Bilski, 561 U.S. at 612.
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Nor do claims 24–43 on appeal present any other issues as set forth in
the 2019 Revised Guidance regarding a determination of whether the
additional generic elements integrate the judicial exception into a practical
application. See Revised Guidance, 84 Fed. Reg. at 55.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)–
(h)), we conclude claims 24–43 do not integrate the judicial exception
into a practical application. Therefore, we proceed to Step 2B, The
Inventive Concept.
The Inventive Concept – Step 2B
Under the 2019 Revised Guidance, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.

Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
We note Berkheimer was decided by the Federal Circuit on
February 8, 2018. The Examiner’s Answer was mailed on February 8, 2018,
on the same day that Berkheimer was decided. On April 19, 2018, the PTO
issued the Memorandum titled: “Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter “Berkheimer
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Memorandum”).11 Appellants filed a Reply Brief on April 9, 2018, a month
and a day after Berkheimer was decided.
The Examiner finds:
The claimed invention is directed towards performing the well-
understood, routine, and conventional activities in the
technical field of receiving an incentive for recycling a product.
Independent claims 24, 35, and 39 are directed towards the
well-understood, routine, and conventional activities of data
collection with regards to information/data associated with a
mobile device, assessing the condition and other factors
associated with the mobile device in order to assess the
condition of the mobile device, determining a trade-in value of
the mobile device based on the collected and assessed
information, and making the trade-in value available to the
owner of the mobile device.
Final Act. 10 (emphasis added).
The Berkheimer Memorandum provided specific requirements for an
Examiner to support with evidence any finding that claim elements (or a
combination of elements) are well-understood, routine, or conventional. In
reviewing the Reply Brief, we note Appellants advance no arguments based
upon the change in the law effected by Berkheimer. Arguments not made
are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Further, regarding the use of the generic mobile device and server
(claim 24) the Supreme Court has held “the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” Alice, 573 U.S. at 223.
Our reviewing court provides additional guidance, including in
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.

11 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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2016) (“the use of generic computer elements like a microprocessor or user
interface do not alone transform an otherwise abstract idea into patent-
eligible subject matter”), and OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015) (claims reciting, inter alia, sending messages
over a network, gathering statistics, using a computerized system to
automatically determine an estimated outcome, and presenting offers to
potential customers found to merely recite “‘well-understood, routine
conventional activit[ies]”’ by either requiring conventional computer
activities or routine data-gathering steps (alteration in original, internal
citation omitted)).
This guidance is applicable here. See Final Act. 10.
Accordingly, on the record before us, we are not persuaded that any of
Appellants’ claims on appeal add a specific limitation, beyond the judicial
exception, that is more than what was “well-understood, routine, [and]
conventional” in the field (see MPEP § 2106.05(d)).
In light of the foregoing, we conclude, under the 2019 Revised
Guidance, that each of Appellants’ claims 24–43, considered as a whole, is
directed to a patent-ineligible abstract idea that is not integrated into a
practical application and does not include an inventive concept.
Accordingly, for the reasons discussed above, we sustain the Examiner’s
Rejection B under 35 U.S.C. § 101 of all claims 24–43 on appeal.12

12 To the extent that Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(1)(iv).

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Rejection C of Independent Claim 24 under 35 U.S.C. § 103
Issue: Under 35 U.S.C. § 103, did the Examiner err by finding
Bowles, Sullivan, Woolridge, Gauthier and KBB, collectively teach or
suggest the disputed limitations:
[L1] wherein the first data comprises internal metrics
related to return rates of other mobile devices that are the same
model as the mobile device and data from repair websites
related to repair rates and costs of other mobile devices that
are the same model as the mobile device;

[L2] receiving, from the server, a listing of statuses of
components to repair of the mobile device and impact of the
statuses on the trade-in value;

[L3] determining a trade-in value for the mobile device
based upon the gathered information, the first data, the second
data, impact of statuses on the trade-in value[,]
within the meaning of representative claim 1? 13 (Emphasis added).

Disputed Limitation L1 of Representative Independent Claim 24
Under Section 103 Rejection C

[L1] wherein the first data comprises internal metrics
related to return rates of other mobile devices that are the same
model as the mobile device and data from repair websites
related to repair rates and costs of other mobile devices that
are the same model as the mobile device;

The Examiner finds limitation L1 (wherein the first data comprises
internal metrics related to return rates of other mobile devices that are the

13 See supra, n.9. We give the contested claim limitations the broadest
reasonable interpretation consistent with the Specification. See Morris,
127 F.3d at 1054.
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same model as the mobile device and data from repair websites related to
repair rates and costs of other mobile devices that are the same model as the
mobile device) of claim 24 is taught or suggested principally by Gauthier, at
¶¶ 38–39. Final Act. 46–51.
However, Gauthier, which is similar to Bowles and
Sullivan, further teaches that it is not only well-known in the
art to look at market information in determining a trade-in
value, but to look at other sources of information.
Specifically, Gauthier teaches that it is well-known in the art
of mobile device recycling to, at least, look at return rates of
mobile devices with a same model of the mobile device for
which the request corresponds to. Gauthier discloses that such
statistical information can aid in further processing of the
request. (For support see Gauthier– ¶ 38, 39)
Final Act. 48.
Contentions by the Appellants— Disputed Limitation L1
Appellants contend Gauthier fails to teach limitation L1 of claim 24.
App. Br. 22–23. Specifically, Appellants contend:
The Examiner states utilizing return rates of other mobile
devices that are the same mobile devices in determining trade-
in value is well known in the art and states that the Gauthier
reference teaches this feature. . . . Gauthier does not teach or
suggest using statistics regarding return rates of mobile devices
in calculating trade-in value, as recited in the claim. In fact,
Gauthier merely teaches presentation of this data in paragraphs
0037–0040 and is silent as to how, if even at all, this data is
used by the manufacturer even though the Office Action alleges
that these paragraphs teach further processing based on this data
in these paragraphs. Accordingly, Gauthier fails to teach this
feature of the claim. Furthermore, the Bowles, Sullivan, and
Woolridge also does not to teach using internal metrics related
to return rates of other mobile devices that are the same model
in trade in value determinations, nor does the Office Action
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allege that this feature is explicitly or implicitly taught by the
Bowles, Sullivan and Woolridge references.
App. Br. 22–23.
The Examiner’s Answer
In response, the Examiner further explains the basis for the rejection:
First, appellant cites ¶ 37 and 40, however, the Examiner cited
38 and 39. Second, as discussed in the rejection, Gauthier has
been provided to teach whether a particular type of information
is well-known to be collected and analyzed, i.e. recycling
statistics. As can be seen in ¶ 38 and 39, Gauthier explicitly
teaches that it is well-known in the art to collect and review
recycling statistics in order to understand the total products of a
selected model that has been sold and the percentage of
those devices that have been recycled or not recycled for a
particular device model, wherein trading in a mobile device is a
form of recycling and the collected statistics is a demonstration
of a return rate. Simply put, Gauthier teaches that this is a well-
known type of information that can be collected and analyzed in
order to gain a better understanding or a particular mobile device
by analyzing the information of other devices of the same model.
Ans. 10–11.

In reviewing the record, we find Appellants are arguing the references
separately.14 The Examiner relies on Gauthier ¶ 38–39, for teaching or
suggesting “internal metrics related to return rates of other mobile devices

14 Nonobviousness cannot be established by attacking the references
individually when the rejection is based upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981).
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that are the same model as the mobile device,” in combination with Bowles,
Sullivan, Wooldridge and KBB references, thus rendering obvious the
contested internal metrics requirement of claim 24. See Final Act. 48.
We emphasize that our reviewing court guides: “the question under
35 USC 103 is not merely what the references expressly teach but what they
would have suggested to one of ordinary skill in the art at the time the
invention was made.” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA
1976)). (Emphasis added); see also MPEP § 2123.
We reproduce the relevant cited portions of Gauthier in context
below:
In some implementations, recycling statistics can be
presented in a chart 304. For example, the chart 304 can
indicate, for the total products of the selected model that have
been sold, the percentages of the devices that have been
recycled or not recycled.
In some implementations, recycling statistics can be
presented in a graph 306. For example, the graph 306 can show
year-by-year statistics regarding the recycling of a selected
device model. In some implementations, the statistics can be
divided in two or more segments, such as to show the
proportions of devices that have been recycled; where recycling
is pending; and that have not been recycled.
Gauthier ¶ 38 – 39 (emphasis added).

We find Gauthier ¶ 38–39 expressly describes recycling statistics of
same mobile device model: “For example, the chart 304 can indicate, for the
total products of the selected model that have been sold, the percentages of
the devices that have been recycled or not recycled. In some
implementations, recycling statistics can be presented in a graph 306. For
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example, the graph 306 can show year-by-year statistics regarding the
recycling of a selected device model.” (emphasis added).
Furthermore, Bowles, Sullivan, Wooldridge, KBB and Gauthier in
combination teach, wherein the first data comprises internal metrics related
to return rates of other mobile devices that are the same model as the mobile
device (Gauthier ¶ 38–39: recycling statistics) and data from repair websites
related to repair rates (Wooldridge ¶ 28 describes testing a mobile device to
determine repair problems and Wooldridge ¶ 30 describes repairing or
replacing the mobile device) and costs of other mobile devices that are the
same model as the mobile device (Bowles ¶ col. 8 line 50 – col. 9 line 7
teaches determining current market price for the trade-in mobile device
based on various online websites.).
Therefore, we find a preponderance of the evidence supports the
Examiner’s legal conclusion of obviousness for disputed limitation L1
regarding Rejection C of independent claim 24. See Ans. 6.

Disputed Limitation L2 of Representative Independent Claim 24
Under Section 103 Rejection C

[L2] receiving, from the server, a listing of statuses of
components to repair of the mobile device and impact of the
statuses on the trade-in value;

The Examiner finds limitation L2 (receiving, from the server, a listing
of statuses of components to repair of the mobile device and impact of the
statuses on the trade-in value) of claim 24 is taught or suggested principally
by Bowles, at ¶¶ col. 8–9 Lines 41–7 and col. 11 lines 17–25. Final Act.
33–34.

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Contentions by the Appellants — Disputed Limitation L2
Appellants contend Bowles fails to teach limitation L2 of claim 24.
App. Br. 24–25. Specifically, Appellants contend:
The FOA alleges that this feature is obvious from the teaching
of Bowles because Bowles allegedly teaches diagnostic testing
of a device and it determines the results of those tests for
various components and compares this information with real
time information from online sites at col. 8–9, 11. 41–7 and col.
11, 11. 17–25. FOA at 33-35, 106. However, the Bowles
reference merely teaches assigning a phone a rating and then
accessing a database to determine real-time values for
the phone for example by using data from websites such as
Craigslist for “determining a current value for the phone.”
Bowles, col. 8, 11. 41–54. The Bowles reference[] fails to
teach or suggest receiving listing of status of components to
repair of the mobile device and the impact of the statuses on the
trade-in value. Merely looking at other parties sales prices,
such as on Craig’s List or asking the customer if a phone has
water damage (Id at col. 11, 11. 24–25) is not the same as
receiving a listing of status of components to repair and the
impact of statuses on the trade-in value. The FOA alleges that
this would be obvious without support in the Bowles reference
or citing other art. Applicant requests, as required, that the
Examiner provide proof of this allegation that this feature,
which is not even mentioned in the Bowles reference, would
have been obvious. As stated in the MPEP, if an Applicant
challenges a factual assertion as not properly Officially Noticed
or not properly based upon common knowledge, the Examiner
must support the finding with adequate evidence. MPEP
2144.03(C). Applicant hereby requests that the Examiner
support this assertion with adequate evidence.

[paragraph break inserted]

The Examiner also reasserts that this would be obvious in
the FOA, stating that it would be obvious to a POSIT
A. However, there is no explicit rationale as to why it would be
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obvious - referencing either in the cited art or other rationale -
instead the Examiner impermissibly uses the Appellant’s
Specification as a roadmap to say that it would be obvious to
determine a condition of the screen and compare it to other
devices {FOA at p. 106), obvious that a broken device is
worth less. In addition, this fails to actually address the claim
feature at issue - that the listing of statuses of components to
repair of the mobile device includes impact of the statuses on
the trade-in value. It is this impact on the status of components
to repair that is not shown in the art for at least the reasons
previously mentioned. The Examiner still fails to shown how
this is taught by Bowles or the other cited art.
App. Br. 24–25.
The Examiner’s Answer
In response, the Examiner further explains the basis for the rejection:
The Examiner asserts that one of ordinary skill in the art
would have found it obvious that a central system, i.e. server,
provides the kiosk with a listing of status of components and
their impact on the trade-in value as the kiosk utilizes this
information in order to determine the trade-in value for the
particular device that is being analyzed. As a non-limiting
example, if the kiosk performs diagnostic testing to determine
the condition of the screen, which, in turn, utilizes the result of
the test and compares it against other devices in the market with
the same condition in order to determine the price of the
particular mobile device or, alternatively, to determine that the
particular device should be valued less than a device of the
same make and model that is defect free. The Examiner asserts
that the invention, as claimed, is broad with how
the information is presented, i.e. is it presented to a user in an
itemized list or is it simply a data file/table provided by the
server and utilized by the evaluation application to determine
how to price the mobile device.

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Further, Bowles discloses that the value of the mobile
begins with an initial value and decreases based on the results
of the diagnostic testing. In view of this, the Examiner asserts
that the value of the mobile device would have been $50 based
on the value of other devices of the same make and model, but
based on the fact that the screen is cracked the application made
a determination that a cracked screen affects the value of the
device, i.e. a cracked screen, based on the information provided
by online sites, results in a, for example, $10 depreciation of the
mobile device, thereby resulting in a trade-in value of $40.
This is supported by Bowles at col. 8-9 Lines 41-7; col. 11
Lines 17–25.
Finally, as explained on Pages 44 – 47,
Woolridge teaches that the information can further be used to
determine the reselling potential of a mobile device by
collecting information about the condition of the device in order
to determine if the device can be repaired or
replaced. Woolridge teaches that it is well-known in the art to
receive a particular type of information that is directed to the
status of components to repair. Similar to what has been
discussed above, the invention is simply collecting
more information in order to provide a more accurate
assessment over the value of the mobile device, wherein the
type of information is well-known to be collected and reviewed,
as can be seen by Woolridge.
Ans. 11–12.
We reproduce the relevant cited portions of Bowles and Woolridge in
context below:
Based on the results of the diagnostics, the system
assigns the phone a rating. This rating can be a selection of one
of a plurality of categories (e.g. excellent, fair, average, poor), a
letter grade (A, B, C, D, F), or a ranking on a numerical scale.
The system then accesses a database to determine a real-time
value for the phone based on current resale values. The
system may use real time or batch connectivity for updating
pricing of used devices, connecting to an auction system or pre-
auction system.
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Bowles ¶ col. 8 line 50 – col. 9 line 7 (emphasis added).

At decision block 409 it is determined if the user wants to
accept the initial price. If so, the system proceeds to step 413.
If not, the system proceeds to step 410 and a series of questions
to determine a possible higher value for the phone. The user is
first asked to identify the carrier at step 410 (see FIG. 5F). At
step 411 the user is asked other questions about the phone such
as whether it powers on (FIG. 5G), if the display works
properly (FIG. 5H) and whether the phone is water damaged
(FIG. 5I). At step 412A the user is given the opportunity to
erase the phone. At step 412B and FIG. 5J, a new value is
presented to the user. In some cases, the new value is higher,
while in others it may be lower, all depending on the
responses provided by the user.
Bowles ¶ col. 11 lines 17–30 (emphasis added).
Step S116, which includes testing device operational
components, functions to evaluate the functionality of basic
hardware and software components of the mobile device. The
component tests of Step S116 preferably test the operating
system, battery, hard drive or memory, memory card reader,
SIM card reader, processor, and/or any other system arranged
on or within the mobile device. Step S116 may include
checking model numbers or version numbers. The model
number or version number of the mobile device can preferably
be used to detect if the mobile device incorporates any
replacement parts and/or modifications. Model numbers or
version checks may additionally be used to determine the age of
the phone. For example, tests for the operating system may
detect if the phone has been “jailbroken” (i.e., manufacturer
restrictions removed), if the SIM card has been unlocked (i.e.,
modified to accept any SIM), or if any suitable non-standard
modification has been performed. Other components are
preferably tested by performing basic operations such as
reading and writing data to memory to test the hard
drive/memory of the mobile device. Step S116 preferably
includes recording battery health (capacity), number of charge
cycles, and any other suitable information. The device
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component tests are preferably background tests, and occur
automatically. In some cases, Step S116 may additionally
include detecting the applications installed on the mobile
device, the identification number of the mobile device, the
version of the operating system operating on the mobile device,
most recent use data of the mobile device, the date of first use
of the mobile device, the cellular provider, the cellular plan
usage, or any other information. This information can
preferably be used when calculating the risk of insuring the
mobile device. The information may alternatively be used to
create a user profile. The user profile is preferably used to
classify the type of user of the mobile device, such as if the user
employs the mobile device for business, games, media, family,
etc.

Step S118, which includes conducting extended
background-testing, functions to perform tests over a long
duration. The steps of S112, S114, and S116 may be
performed in a single short session with the application (e.g.,
around one minute). Step S118 functions to perform longer
duration tests. The application preferably operates in the
background for an extended period of time such as a day or a
week, which functions to collect data from the phone during
normal operation. Various sensors preferably collect periodic
data.
For example GPS and accelerometer data is preferably
collected. The data may be used to classify the user into
particular behavioral pools. For example, the frequency of use
of the phone may be detected based on movement, phone
network usage, network usage, etc. As another example, from
location and motion data, analysis could preferably indicate if
the user uses the mobile device while running, travelling, or
performing other suitable activities.
Wooldridge ¶ 20–21 (emphasis added).

We find Bowles (¶ col. 8 line 50 – col. 9 line 7) expressly describes
determining a trade-in value: “Based on the results of the diagnostics, the
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system assigns the phone a rating. . . . The system then accesses a database
to determine a real-time value for the phone based on current resale
values. . . ”
Furthermore, Wooldridge (¶¶ 20 – 21) expressly describes mobile
device testing to determine repair components:
. . . testing device operational components, functions to
evaluate the functionality of basic hardware and software
components of the mobile device. The component tests of Step
S116 preferably test the operating system, battery, hard drive
or memory, memory card reader, SIM card reader, processor,
and/or any other system arranged on or within the mobile
device. . . . The device component tests are preferably
background tests, and occur automatically. . . . Step S118,
which includes conducting extended background-testing,
functions to perform tests over a long duration. . . .
(Emphases added).
Claim 24 limitation L2 only requires: “receiving, from the server, a
listing of statuses of components to repair of the mobile device and impact of
the statuses on the trade-in value.” (emphasis added). We note Wooldridge
¶¶ 20 – 21 expressly teaches receiving list repair components of the mobile
device and Bowles ¶¶ col. 8–9 Lines 41–7 and col. 11 lines 17–25 expressly
teach the impact of repair components on the trade-in value. Claim 24.
Because Appellants’ arguments attack Bowles in isolation, and do not
substantively traverse the Examiner’s specific findings regarding Bowles
considered in combination with Wooldridge, Sullivan, KBB and Gauthier,
on this record, we are not persuaded of error regarding the Examiner’s
underlying factual findings and ultimate legal conclusion of obviousness for
contested limitation L2 of representative independent claim 24. App. Br.
24–26.
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Disputed Limitation L3 of Representative Independent Claim 24
Under Section 103 Rejection C

[L3] determining a trade-in value for the mobile device
based upon the gathered information, the first data, the second
data, impact of statuses on the trade-in value;

The Examiner finds limitation L3 (determining a trade-in value for
the mobile device) of claim 24 is taught or suggested principally by Bowles,
at ¶¶ col. 4 Lines 46 – 58 and col. 8–9 Lines 41–7. Final Act. 35.
We reproduce the relevant cited portions of Bowles in context below:
In one embodiment, the display of the system displays
current purchase prices for different models of mobile phones.
This can be used to encourage and provide incentive to
customers to bring their used phones to the kiosk for resale or
recycling. The kiosk can be in regular and periodic
communication with the server to receive such data and update
its display accordingly. The pricing data provided to the kiosk
is called the Offer Price to the consumer, and is based upon
aftermarket sales prices which vary on a regular basis (i.e.,
daily) and for each make/model of recycled device. The offer
price presented to the consumer is determined by subtracting
the recycling fee from the pricing data provided by the
aftermarket reseller.
Bowles ¶ col. 4 Lines 46–58 (emphasis added).

This data can be scraped from online sites such as eBay or
Craigslist, it may be generated by the system and updated
periodically, it may be based on a consumer guide, or any other
suitable method for determining a current value for the phone.
The value is determined by a current market price obtained
via communication to the recycling server 214 using the
communications network 206. The recycling server obtains a
current market price for the phone from one of the service
providers and stores, on a regular basis, market prices on the
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database. . . . The system then offers the customer a price or
other remuneration for the phone that is typically less than the
resale value. In other embodiments, the system can offer the
customer a price or remuneration that is at the current real-
time market price.
Bowles ¶ col. 8 line 50 – col. 9 line 7 (emphasis added).

In reviewing the record, we find Appellants are arguing the references
separately. The Examiner relies on Bowles ¶ col. 4 Lines 46–58 and ¶ col. 8
line 50 – col. 9 line 7, for teaching or suggesting “determining a trade-in
value for the mobile device based upon the gathered information, the first
data, the second data, impact of statuses on the trade-in value,” thus
rendering obvious the contested trade-in requirement of claim 24. See Final
Act. 35.
We find Bowles ¶ col. 4 Lines 46–58 expressly describes determining
a trade-in value for the mobile device:
The pricing data provided to the kiosk is called the Offer
Price to the consumer, and is based upon aftermarket sales
prices which vary on a regular basis (i.e., daily) and for each
make/model of recycled device. The offer price presented to the
consumer is determined by subtracting the recycling fee from
the pricing data provided by the aftermarket reseller.

(Emphases added).

Furthermore, Bowles ¶ col. 8 line 50 – col. 9 line 7 expressly
describes determining current market price based on other websites:
This data can be scraped from online sites such as eBay
or Craigslist, it may be generated by the system and updated
periodically, it may be based on a consumer guide, or any other
suitable method for determining a current value for the phone.
The value is determined by a current market price obtained
via communication to the recycling server 214 using the
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communications network 206. The recycling server obtains a
current market price for the phone from one of the service
providers and stores, on a regular basis, market prices on the
database. . . . Once the value is determined, the value is
provided at step 307 to the kiosk. The system then offers the
customer a price or other remuneration for the phone that is
typically less than the resale value. In other embodiments, the
system can offer the customer a price or remuneration that is at
the current real-time market price.

Claim 24, disputed limitation L3, requires: “determining a trade-in
value for the mobile device based upon the gathered information, the first
data, the second data, impact of statuses on the trade-in value.” (Emphasis
added). We note Bowles (¶ col. 4 Lines 46–58 and ¶ col. 8 line 50 – col. 9
line 7) expressly teaches determining a trade-in value for the mobile device.”
Claim 24.
Because Appellants’ arguments attack Bowles in isolation, and do not
substantively traverse the Examiner’s specific findings regarding Bowles
considered in combination with Sullivan, Woolridge, Gauthier and KBB, on
this record, we are not persuaded of error regarding the Examiner’s
underlying factual findings and ultimate legal conclusion of obviousness for
contested limitation L3 of representative independent claim 24. App. Br.
20–26. For the aforementioned reasons, we sustain the Examiner’s
rejection C of independent claim 24.
Rejection F of Independent Claim 35 and
Rejection C of Independent Claim 39

Appellants advance no separate, substantive arguments for remaining
independent claims 35 and 39. Appellants urge these claims are allowable
based upon the argued limitations of independent claim 24 (App. Br. 26–27).
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Because we find Appellants’ arguments unpersuasive for independent claim
24, for the reasons discussed above, on this record, we are not persuaded the
Examiner erred. Accordingly, we sustain the Examiner’s Rejection C of
independent claim 39, and Rejection F of independent claim 35.

Rejections C – G of All Remaining Dependent Claims

Appellants advance no separate, substantive arguments for any of the
dependent claims. Therefore, on this record, we are not persuaded the
Examiner erred regarding Rejections C – F of all remaining dependent
claims on appeal.
DECISION
We reverse the Examiner’s decision rejecting claims 24–43 under
35 U.S.C. § 112(a), first paragraph.
We affirm the Examiner’s decision rejecting claims 24–43 under
35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 24–43 under
35 U.S.C. § 103.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
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