David J. Edmondson et al.Download PDFPatent Trials and Appeals BoardAug 1, 201914519657 - (D) (P.T.A.B. Aug. 1, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 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. Appeal 2018-005100 Application 14/519,657 2 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.”). Appeal 2018-005100 Application 14/519,657 3 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). Appeal 2018-005100 Application 14/519,657 4 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 Appeal 2018-005100 Application 14/519,657 5 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. Appeal 2018-005100 Application 14/519,657 6 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] Appeal 2018-005100 Application 14/519,657 7 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] Appeal 2018-005100 Application 14/519,657 8 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 Appeal 2018-005100 Application 14/519,657 9 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 Appeal 2018-005100 Application 14/519,657 10 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: Appeal 2018-005100 Application 14/519,657 11 (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). Appeal 2018-005100 Application 14/519,657 12 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 Appeal 2018-005100 Application 14/519,657 13 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- Appeal 2018-005100 Application 14/519,657 14 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 Appeal 2018-005100 Application 14/519,657 15 (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 Appeal 2018-005100 Application 14/519,657 16 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 Appeal 2018-005100 Application 14/519,657 17 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). Appeal 2018-005100 Application 14/519,657 18 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. Appeal 2018-005100 Application 14/519,657 19 (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”). Appeal 2018-005100 Application 14/519,657 20 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). Appeal 2018-005100 Application 14/519,657 21 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. Appeal 2018-005100 Application 14/519,657 22 [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. Appeal 2018-005100 Application 14/519,657 23 [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. Appeal 2018-005100 Application 14/519,657 24 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. Appeal 2018-005100 Application 14/519,657 25 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. Appeal 2018-005100 Application 14/519,657 26 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. Appeal 2018-005100 Application 14/519,657 27 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 Appeal 2018-005100 Application 14/519,657 28 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. Appeal 2018-005100 Application 14/519,657 29 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). Appeal 2018-005100 Application 14/519,657 30 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. Appeal 2018-005100 Application 14/519,657 31 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 Appeal 2018-005100 Application 14/519,657 32 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). Appeal 2018-005100 Application 14/519,657 33 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 Appeal 2018-005100 Application 14/519,657 34 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. Appeal 2018-005100 Application 14/519,657 35 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 Appeal 2018-005100 Application 14/519,657 36 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. Appeal 2018-005100 Application 14/519,657 37 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. Appeal 2018-005100 Application 14/519,657 38 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 Appeal 2018-005100 Application 14/519,657 39 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 Appeal 2018-005100 Application 14/519,657 40 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. Appeal 2018-005100 Application 14/519,657 41 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 Appeal 2018-005100 Application 14/519,657 42 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 Appeal 2018-005100 Application 14/519,657 43 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). Appeal 2018-005100 Application 14/519,657 44 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 Copy with citationCopy as parenthetical citation