Den Herder, Nathan Pieter. et al.

Patent Trials and Appeals Board

Oct 2, 2020

2019002838 (P.T.A.B. Oct. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/614,705 09/13/2012 Nathan Pieter Den Herder 880417-0123-US00 5602
134795 7590 10/02/2020
MICHAEL BEST & FRIEDRICH LLP (DC)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
10/02/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
DCipdocket@michaelbest.com
nbenjamin@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NATHAN PIETER DEN HERDER, JOHN BREVARD SIGMAN,
NATHAN LANDE, and ERIC ROSENBLATT
____________

Appeal 2019-002838
Application 13/614,705
Technology Center 3600
____________

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

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 51–70. An oral hearing in this appeal was held on May
11, 2020. We have jurisdiction under 35 U.S.C. § 6(b).

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed Sept. 5, 2018) and Reply Brief (“Reply Br.,” filed Feb. 27, 2019); the
Examiner’s Answer (“Ans.,” mailed Dec. 27, 2018) and Final Office Action
(“Final Act.,” mailed Apr. 4, 2018), and the Oral Hearing Transcript (“Tr.,”
mailed May 26, 2020). Appellant identifies Fannie Mae as the real party in
interest. Appeal Br. 3.
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We AFFIRM, designating the affirmance as a NEW GROUND OF
REJECTION, pursuant to 37 C.F.R. § 41.50(b).
CLAIMED INVENTION
The claimed invention “relates generally to a photograph initiated
appraisal process and application for evaluating a subject property.”
Spec. ¶ 1.
Claim 51, reproduced below with bracketed notations added, is the
sole independent claim on appeal, and is representative of the claimed
subject matter:
51. A method for producing a photograph initiated
property assessment, the method comprising:
[(a)] after an electronic device acquires property data for
the subject property, the electronic device determines whether or
not the property data includes property location information,
wherein the property location information identifies an address
of the subject property; and
[(b)] when the electronic device determines that the
property data does not include the property location information,
the electronic device detects a physical location of the electronic
device, wherein the electronic device is configured to use
location technology to detect the physical location of the
electronic device.

REJECTIONS
Claims 51–71 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 51–71 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
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Claims 55, 59, and 70 are rejected under 35 U.S.C. § 112, second
paragraph as indefinite.2
Claims 51, 53–55, 57–70 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Almeida (US 2006/0155571 A1, pub. July 13, 2006) and
Graboske (US 2011/0258127 A1, pub. Oct. 20, 2011).
Claim 52 is rejected under 35 U.S.C. § 103(a) over Almeida,
Graboske, and Lalik (US 2005/0253752 A1, pub. Nov. 17, 2005).

ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues the pending claims as a group. Appeal Br. 6. We
select independent claim 51 as representative. The remaining claims stand
or fall with claim 51. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.

2 The Examiner withdrew the rejection of claim 54 under 35 U.S.C. § 112,
second paragraph in the Answer. Ans. 3.
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The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to
producing a photographic initiated property
assessment by receiving and analyzing property
data to determine a location for a property, so the
property type can be discerned and used to generate
the assessment for the property, where the
assessment is used to guide a person through the
process of taking photos for a subject property by
receiving information and correlating it to stored
information.
Final Act. 4. The Examiner found that this concept is a mental process that
can be performed in the human mind, or by a human using pen and paper.
Id. The Examiner additionally found that the claims are analogous to several
cases involving collecting and analyzing information that the court has held
to be patent ineligible. Id. at 5–7 (collecting cases). The Examiner also
determined that the claims do not include additional elements, considered
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individually and as an ordered combination, sufficient to amount to
significantly more than the abstract idea itself. Id. at 7– 8.
After Appellant’s Appeal Brief and the Examiner’s Answer mailed,
the U.S. Patent and Trademark Office (the “USPTO”) published revised
guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “Revised
Guidance”). That guidance revised the USPTO’s examination procedure
with respect to the first step of the Mayo/Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.3,4

3 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance
issued prior to the Ninth Edition, R-08.2017, of the MPEP (published Jan.
2018) should not be relied upon.”). Accordingly, Appellant’s arguments
challenging the sufficiency of the Examiner’s rejection will not be addressed
to the extent those arguments are based on now superseded USPTO
guidance.
4 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (hereinafter “October
2019 Update”) clarifying the Revised Guidance in response to comments
received from the public.
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Step One of the Mayo/Alice Framework (Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the Revised Guidance (i.e., Step 2A), is a two-prong test; in
Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. Revised Guidance, 84 Fed.
Reg. at 54. If so, we next consider whether the claim includes additional
elements, beyond the judicial exception, that “integrate the [judicial]
exception into a practical application,” i.e., that apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
We are not persuaded here that the Examiner erred in determining that
claim 51 is directed to an abstract idea. See Appeal Br. 6–7. The Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the specification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
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2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
Here, it is clear from the Specification (including the claim language) that
claim 51 focuses on an abstract idea, and not on any improvement to
technology and/or a technical field.
The Specification is titled “PHOTOGRAPH INITIATED
APPRAISAL PROCESS AND APPLICATION,” and describes, in the
Background section, that a conventional property valuation and data
gathering method is “a home inspection in which a home inspector performs
a review of a subject property by surveying the rooms and fixtures of the
subject property and estimating the subject property’s value based upon the
review.” Spec. ¶ 2. Typically, the home inspector records written notes of
the review. Id. However, the notes are not especially useful when data is
incomplete, inaccurate, and/or subjective. Id. For example, an inspector
may mistakenly record that a kitchen has an unfinished wood floor when it
has a stone tile floor. Id. “If a picture of the kitchen was associated with an
appraisal report, an evaluator of the appraisal could easily see the entry
mistake without physically visiting the property.” Id. However, “there is no
such procedure for associating pictures with a home evaluation.” Id.
Appellant, thus, describes that “there is a need for a sophisticated[,]
regimented procedure of implementing a home inspection in accordance
with photographs that may be evaluated at a later time without the
evaluator’s physical presence at a subject property.” Id.
The claimed invention is intended to address this shortcoming.
Claim 51 recites a method for producing a photograph initiated property
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assessment of a subject property comprising two steps: (1) “after an
electronic device acquires property data for the subject property, the
electronic device determines whether or not the property data includes
property location information, wherein the property location information
identifies an address of the subject property” (step (a)); and (2) “when the
electronic device determines that the property data does not include the
property location information, the electronic device detects a physical
location of the electronic device, wherein the electronic device is configured
to use location technology to detect the physical location of the electronic
device” (step (b)).
These limitations, when given their broadest interpretation, recite a
method for producing a property assessment of a subject property. The
concept of producing a property assessment, as set forth above by limitations
(a) and (b) of claim 51, pertains to sales activities or behaviors (i.e., a
commercial interaction), which is a certain method of organizing human
activity and, therefore, an abstract idea. See Revised Guidance, 84 Fed. Reg.
at 52.
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites additional elements that integrate the judicial exception into a
practical application (Step 2A, Prong Two).
Beyond the abstract idea, claim 51 recites an “electronic device” for
performing steps (a) and (b), and the electronic device is “configured to use
location technology to detect the physical location of the electronic device.”
Appellant argues that claim 51 sets forth a specific structure. Appeal Br. 6.
However, Appellant’s argument is not persuasive, at least because
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Appellant’s Specification makes clear that the claimed invention is
implemented using a generic computer components performing generic
computer functions. See, e.g., Spec. ¶¶ 12 (describing that the claimed
invention “provides an application for a tablet, a smartphone, a laptop, or a
similar device that utilizes imaging technology and numerous data sources to
provide an assessment of a subject property”), 20–23 (providing “[a]ny
computer system . . . may be used”), 23, 34 (“location control module 207
determines the physical location using any location determination
technology”). For example, the Specification describes that any computer
system can implemented the claimed invention. See id. ¶ 20. The
Specification also describes the use of location determination technology at
a high level of generality. For example, the Specification provides that
location determination technology includes
time of flight (measuring distance by the time of
propagation of pulsed signals, e.g. global
positioning systems), spatial scan (triangulating
using a beacon and sensor), inertial sensing
(measuring position with an accelerometer), phase
difference (measuring the shift in phase for
incoming signals), or a hybrid thereof. Some of
these technologies may be referred to as network-
based, handset-based, or SIM-based technologies.
Regardless of the colloquial term, any of the
numerous location determination technologies that
would be readily apparent to an artisan may be
employed by the location control module 207.
Id. ¶ 34.
We find no indication in the Specification that the operations recited
in claim 51 require any specialized computer hardware or other inventive
computer components, i.e., a particular machine, invoke any allegedly
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inventive programming, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the claimed
invention integrates the abstract idea into a “practical application,” as that
phrase is used in the Revised Guidance.5
Appellant argues that claim 51, like the claims at issue in Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016), is
“directed to an improvement in how an object is analyzed.” Appeal Br. 8–
10 (citing Spec. ¶¶ 34, 45). Appellant further contends that claim 51
provides “an unconventional technological solution (detecting a physical
location of the electronic device when the electronic device determines that
the property data does not include the property location information) to a

5 The Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. Revised Guidance, 84 Fed. Reg. at 55. If
the recited judicial exception is integrated into a practical application, as
determined under one or more of these MPEP sections, the claim is not
“directed to” the judicial exception.
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technological problem.” Appeal Br. 12 (citing Amdocs, 841 F.3d at 1300).
Appellant’s reliance on Amdocs is misplaced.
There, the Federal Circuit held that the claim at issue was patent
eligible because the claim entailed an unconventional technological solution
(enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases).
Amdocs, 841 F.3d at 1300. Although the solution required generic
components, the court determined that “the claim’s enhancing limitation
necessarily requires that these generic components operate in an
unconventional manner to achieve an improvement in computer
functionality” and that the “enhancing limitation depends not only upon the
invention's distributed architecture, but also depends upon the network
devices and gatherers -- even though these may be generic -- working
together in a distributed manner.” Amdocs, 841 F.3d at 1300–01.
Here, contrary to Appellant’s assertions, Appellant’s Specification
does not describe the solution as necessarily rooted in technology or the
problem as a technological problem. See, e.g., Spec. ¶¶ 34, 45. For
example, Appellant does not identify any “distributed architecture”
comparable to that in Amdocs. There also is no persuasive evidence of
record that the generic components recited in claim 51 operate in an
unconventional manner, as in Amdocs, to achieve an improvement in
computer functionality. Instead, Appellant’s claimed invention seeks to
improve a process that is itself an abstract idea by applying it to a particular
technological environment involving known computer components and
technology. See, e.g., Spec. ¶ 3 (describing “a need for a . . . procedure of
implementing a home inspection in accordance with photographs that may
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be evaluated at a later time without the evaluator’s physical presence at a
subject property.”
Appellant asserts that claim 51 is similar to the claims at issue in SiRF
Technology Inc. v. International Trade Commission, 601 F.3d 1319, 1332–
33 (Fed. Cir. 2010), because “an electronic device . . . is configured to use
location technology to detect the physical location of the electronic device”
and this feature is “integral” to the claim and places a meaningful limit on
[its] scope.” Appeal Br. 12 (emphasis omitted).
In SiRF the Federal Circuit found that the claims were “directed to
various improvements over conventional A-GPS technology.” SiRF Tech.,
601 F.3d at 1323. Stated another way, the claims were not directed to
abstract-idea processes, but rather to an improvement over conventional
GPS technology itself. See id. (finding the ’801 patent “allow[s the GPS]
receiver to calculate its position more quickly and even in weak-signal
environments,” and the ’187 patent “extends the solution of the ’801 patent
. . . [to] allow[] the improved, repeated calculation of a GPS receiver’s
position as it changes over time”).
Appellant’s claimed invention uses location technology. However,
there is no indication that claim 51 improves location determination
technology or any other relevant technology. Nor is there any indication that
claim 51 solves a problem rooted in technology. Instead, claim 51 is
directed to an improvement in producing a property assessment. Improving
a process for producing a property assessment may well provide a solution
to a real estate problem, i.e., providing photographs with a property
assessment that may be evaluated at a later time without the evaluator’s
presence at a subject property.
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We conclude, for the reasons outlined above, that claim 51 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim are no more than generic computer
components used as tools to perform the recited abstract idea. As such, they
do not integrate the abstract idea into a practical application. See Alice
Corp., 573 U.S. at 223–24 (“[W]holly generic computer implementation is
not generally the sort of ‘additional featur[e]’ that provides any ‘practical
assurance that the process is more than a drafting effort designed to
monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)).
Accordingly, we agree with the Examiner that claim 51 is directed to an
abstract idea.
Step Two of the Mayo/Alice Framework (Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 51 is directed to an abstract idea, we next consider under Step 2B of
the Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 51 includes additional elements or a combination of elements
that provide an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself. Revised
Guidance, 84 Fed. Reg. at 56. As stated in the Revised Guidance, many of
the considerations to determine whether the claims amount to “significantly
more” under step two of the Alice framework have been considered as part
of determining whether the judicial exception has been integrated into a
practical application. Id. Thus, at this point of our analysis, we determine if
the claims add a specific limitation, or combination of limitations, that is not
well-understood, routine, conventional activity in the field, or simply
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appends well-understood, routine, conventional activities at a high level of
generality. Id.
On the record before us, claim 51 fails to recite specific limitations (or
a combination of limitations) that are not well-understood, routine, and
conventional. Rather, the only additional elements (i.e., an electronic
device, and using “location technology” to detect a location of the electronic
device) are generic computer components and actions recited at a high level
of generality, none of which Appellant persuasively argues is beyond what
was well-understood, routine, and conventional in the art.
To the extent Appellant maintains that claim 51 is patent eligible
because the claim is novel and/or non-obvious, Appellant misapprehends the
controlling precedent. See Appeal Br. 12 (asserting that the claimed
invention provides an “unconventional” technological solution). Neither a
finding of novelty nor a non-obviousness determination automatically leads
to the conclusion that the claimed subject matter is patent eligible. A novel
and non-obvious claim directed to a purely abstract idea is, nonetheless,
patent ineligible. See Mayo, 566 U.S. at 90.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 51 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 51, and claims 52–70, which fall
with claim 51. Because our rationale differs from the Examiner’s, we
designate our affirmance as a new ground of rejection.
Written Description
Whether a specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v. Faulding
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Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But, the specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, the inventors were
in possession of the claimed invention. See id.
Independent Claim 51, and Dependent Claims 52–70
In rejecting claims 51–70 as failing to comply with the written
description requirement, the Examiner notes that
[c]laim 51 recites that an electronic device acquires property
data. According to the specification this is the act of a user
entering either the property address or property type. In
paragraphs 044 and 045 the operation of the method is disclosed.
It is disclosed that when a user is making a request for a
photographic assessment itinerary, property information such as
property location or property types is received or determined.
Disclosed is that the request for the assessment itinerary may
include the user entering the property type, in which case the
system then generates the assessment itinerary for that given
property type. However, a user may also enter the property
address and the specification discloses that this is used to
determine the property type. A third option is disclosed as
occurring in paragraph 045, which is that if the request does not
contain the property type of [sic] location, then the system can
use location determining technology to determine the location of
the device so that the property type can be discerned. The
problem with the claim is that the applicant has recited that
property data is received, and that this is checked to see if it
contains the location. This situation where the user has entered
either the property location or the property type does not use or
involve the location determination technology that is also recited
in claim 51. Applicant recites that when the device determines
that the property data (disclosed as being either the property
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location or property type), then [sic] the device detects the
physical location. This is new matter that is not supported by the
original disclosure. When property data has been received from
a user, there is no use of any location determining technology
because the property data (property type or property location) is
used to determine the property type so that the proper assessment
itinerary can be generated. Therefore, it is new matter for the
applicant to claim the use of the location technology
determination when property data is received that is either the
property type of [sic] the property location. The specification
does not disclose that the location determining technology is
being used when the property data has been received. This is the
reason that the examiner feels that claim 51 contains new matter.

Final Act. 15–16.
The issue underlying the Examiner’s concerns with the written
description turns on the proper construction of the term “property data.” The
Examiner interprets the claimed “property data” as “property type or
property location” based on the example provided in Figure 4 and its
description at paragraphs 44 and 45. However, we agree with Appellant that
one of ordinary skill in the art would understand, in view of the
Specification, that the term “property data” is not limited to information
concerning property type or property location. Instead, property data
includes all information used in a property assessment. Tr. 7–8. For
example, the Specification describes property data used in a property
assessment as including square footage, number of units, year built,
appliances, foundation, exterior description, number of bedrooms, type of
flooring in each bedroom, view from bedroom windows, number of
bathrooms, type of fixtures in each bathrooms, neighborhood, appraisal
history, lot size, gross living area, age, location specific effects, property
condition, property type, and comparable properties. Spec. ¶¶ 15–16, 36
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(providing “property data” (e.g., comparable properties)), 37, 42 (describing
the amount of property as “rather voluminous”), 45, 47, 48 (describing
various categories for describing property data).
The Examiner’s concerns set forth with respect to claim 51, as well as
claims 55, 58–60, and 70, resolve themselves once the claim language is
properly construed. Therefore, we agree with Appellant that the
Specification provides the requisite written description support for each of
these claims. See Appeal Br. 13–20 (citing Spec. ¶¶ 34, 43, 45, Figs. 2A, 4).
For example, the Specification describes that when property data is received
that is not a property type (step 402) and not a property location (step 404),
the claimed invention uses location determination technology to determine a
physical location of the electronic device (step 406). Spec. ¶ 45, Fig. 4.
Regarding claim 56, the Examiner takes the further position that
property data being received from the communication network is new
matter, because the Specification discloses the property data as being entered
by a user, such as a property type or an address. Final Act. 20. However, as
described above, the Examiner premises this rejection on property data being
limited to property type or address when it is not so limited. We agree with
the Appellant that the Specification provides the requisite support for this
limitation. Appeal Br. 21 (citing Spec. ¶¶ 23, 40–42, Figs. 2A–3B). For
example, the Specification describes with reference to Figures 2A through
3B connecting to a communication network with an electronic device. Spec.
¶ 40; see also id. ¶ 42 (describing connections to various sources of property
data, including financial institution databases, MLS listings, GIS data, tax
assessors, and appraising services.
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Accordingly, we do not sustain the Examiner’s rejection of claims 51–
70 under 35 U.S.C. § 112, first paragraph.
Indefiniteness
Dependent Claims 55
In rejecting claim 55 under 35 U.S.C. § 112, second paragraph, as
indefinite, the Examiner takes the position that the scope of the claim is not
clear “because it is confusing to recite that the location detection occurs
when no property data is found, but that it also occurs upon user request.”
Final Act. 21; see also id. at 22. We agree with Appellant that a person of
ordinary skill in the art would understand what is claimed, when the claim
language is read in light of the Specification, namely, that claim 55 specifies
that the user can requests the step of detecting and in claim 51 the detecting
could be automatically or by user request. Appeal Br. 16; Reply Br. 15–16.
Dependent Claims 59
In rejecting claim 59 under 35 U.S.C. § 112, second paragraph, as
indefinite, the Examiner also takes the position that the scope of this claim is
not clear “because it is confusing to recite that the location detection occurs
when no property data is found, but that it also occurs upon user request.”
Final Act. 21; see also id. at 22; Ans. 18–19. This confusion stems from the
incorrect construction of “property data,” described above. When “property
data” is construed properly, we agree with Appellant that a person of
ordinary skill in the art would understand what is claimed, when the claim
language is read in light of the Specification. Appeal Br. 16; Reply Br. 15–
16.
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Dependent Claim 70
In rejecting claim 70 under 35 U.S.C. § 112, second paragraph, as
indefinite, the Examiner takes the position that claim 70 is “an improper
dependent claim” because it changes statutory class from a method to a
computer. Final Act. 22. However, we agree with Appellant that a person
of ordinary skill in the art would understand that claim 70 recites a non-
transitory computer readable medium storing computer code that, when
executed, performs the method of claim 1. Appeal Br. 29.
Therefore, we do not sustain the Examiner’s rejection of claims 55,
59, and 70 under 35 U.S.C. § 112, second paragraph, on this basis. See
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986) (The test for definiteness under 35 U.S.C. § 112, second
paragraph, is whether “those skilled in the art would understand what is
claimed when the claim is read in light of the specification.”).

Obviousness
Independent Claim 51 and Dependent claims 53–55 and 57–70
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting claim 51 under 35 U.S.C. § 103(a), because Graboske does not
teach checking if property data includes location information and detecting a
physical location of the electronic device “when the electronic device
determines that the property data does not include the property location
information,” as recited in claim 51. Appeal Br. 34–35. The Examiner
relies on paragraph 5, 10, 25, 26, and 31 of Graboske for disclosing the
argued limitations. Final Act. 24.
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Graboske discloses using a computing device with a built in Global
Positioning Feature (GPS). Graboske ¶ 25. The GPS feature allows for
automatic population of a form based on the device location. Id. In
particular, the computing device uses the location of the device to query a
public records database for records associated with the property. Id.
Graboske’s method includes an appraiser receiving an electronic appraisal
form on computing device 16 (step 510). Id. ¶ 31, Fig. 2. Then, the GPS
locates the geographic position of computing device 16. Id. Next, the
appraisal system uses the geographic position to locate data for a
corresponding property stored in real estate database 12, and the data is used
to populate data fields on the electronic appraisal form. Id. ¶ 32.
Because Graboske first obtains GPS location data and then retrieves
property information, we agree with Appellant that Graboske fails to teach
or suggest determining whether the property data includes property location
after an electronic device acquires property data for the subject property.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 51 and dependent claims 53–55 and 57–70 under 35
U.S.C. § 103(a).
Dependent Claim 52
The additional art cited in the rejection of dependent claim 52 does
not cure the deficiencies in the rejection of independent claim 51.
Therefore, we also do not sustain the Examiner’s rejection of dependent
claim 52 under 35 U.S.C. § 103(a) for the same reasons set forth above with
respect to claim 51.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
References/Bas
is
Affirm
ed
Reversed New
Ground
51–70 101 Eligibility 51–70 51–70
51–70 112, first
paragraph
Written
Description
51–70
55, 59, 70 112,
second
paragraph
Indefiniteness 55, 59, 70
51, 53–55,
57–70
103(a) Almeida,
Graboske
51, 53–
55, 57–70

52 103(a) Almeida,
Graboske, Lalik
52
Overall
Outcome
51–70 51–70
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record. The request for rehearing must
address any new ground of rejection and state with particularity the points
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believed to have been misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds upon which rehearing is
sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED; NEW GROUND 37 C.F.R. § 41.50(b)