Dianna SerioDownload PDFPatent Trials and Appeals BoardSep 26, 201914472660 - (D) (P.T.A.B. Sep. 26, 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. 14/472,660 08/29/2014 Dianna Serio CORLOG.028US 7177 125224 7590 09/26/2019 Muncy, Geissler, Olds & Lowe, P.C._CoreLogic 4000 Legato Road Suite 310 Fairfax, VA 22033 EXAMINER NGUYEN, TAN D ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 09/26/2019 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): eofficeaction@appcoll.com meo.docket@mg-ip.com meo@mg-ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DIANNA SERIO ____________ Appeal 2018-006200 Application 14/472,660 Technology Center 3600 ____________ Before ST. JOHN COURTENAY, III, JOHN A. EVANS, and LINZY T. McCARTNEY, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134(a) of the Examiner’s Final Rejection of Claims 1–20 which constitute all the claims pending in this application. App. Br. 23–26 (Claims Appx.). We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 Appellant states CoreLogic Solutions LLC, is the real party in interest. App. Br. 3. 2 Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed December 11, 2017, “App. Br.”), the Reply Brief (filed May 29, 2018, “Reply. Br.”), the Examiner’s Answer (mailed March 27, 2018, “Ans.”), the Final Action (mailed August 11, 2017, “Final Appeal 2018-006200 Application 14/472,660 2 STATEMENT OF THE CASE The claims relate to systems and methods for performing building permit analytics for real estate properties. See Abstract. Invention Claims 1, 8, and 14 are independent. An understanding of the invention can be derived from a reading of Claim 1, which is reproduced below. 1. A system comprising: physical data storage configured to store building permits data; and a computer system in communication with the physical data storage, the computer system comprising computer hardware, the computer system programed to: receive, by the computer system over a network communication channel, identification information associated with a subject property; identify, by the computer system, one or more building permits associated with the subject property from the physical data storage; determine, by the computer system, an automated valuation for the subject property based at least in part on the one or more identified building permits; and store the determined automated valuation in the physical data storage. Act.”), and the Specification (filed August 29, 2014, “Spec.”) for their respective details. Appeal 2018-006200 Application 14/472,660 3 References and Rejections3 Leibowitz US 2005/0071174 A1 Mar. 31, 2005 Moudy US 2008/0306982 A1 Dec. 15, 2008 Hutchinson US 2013/0036031 A1 Feb. 7, 2013 1. Claims 1–20 stand rejected under 35 U.S.C. § 101 as directed to an abstract idea without significantly more. Final Act. 3–12. 2. Claims 1–3, 6–13, and 14–20 stand rejected under pre-AIA 35 U.S.C. § 103 as obvious over Hutchinson and Moudy. Final Act. 12– 22. 3. Claims 4 and 5 stand rejected under pre-AIA 35 U.S.C. § 103 as obvious over Hutchinson, Moudy, and Leibowitz. Final Act. 22– 23. ANALYSIS We have reviewed the rejections of Claims 1–20 in light of Appellant’s arguments. We consider Appellant’s arguments as they are presented in the Appeal Brief, pages 6–32 and the Reply Br., pages 1–16. For the reasons that follow, we are not persuaded the Examiner has erred. 3 The present Application is being examined under the pre-AIA first to invent provisions. Final Act. 2. Appeal 2018-006200 Application 14/472,660 4 CLAIMS 1–20: INELIGIBLE SUBJECT MATTER. Appellant argues Claims 1–20 as a group in view of the limitations of the independent claims. Therefore, we decide the appeal of the § 101 rejections with reference to Claim 1 and refer to the rejected claims collectively herein as “the claims.” See 37 C.F.R. § 41.37(c)(1)(iv); see also In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). PRINCIPLES OF LAW A. 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. § 101.4 The Examiner finds the claims are directed to statutory categories. Final Act. 6. 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 Services v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (citing 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. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) 4 This threshold analysis of whether a claim is directed to one of the four statutory categories of invention, i.e., a process, machine, manufacture, or composition of matter, is referred to as “Step 1” in the patent-eligibility inquiry under 35 U.S.C. § 101. Appeal 2018-006200 Application 14/472,660 5 (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.”); 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; see also 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, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diehr, 450 U.S. at 191); “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 “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, 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 Appeal 2018-006200 Application 14/472,660 6 in the abstract . . . is not accorded the protection 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. at 191 (citing Benson and Flook), 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.”). Abstract ideas may include, but are not limited to, fundamental economic practices, methods of organizing human activities, and mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under this guidance, we must therefore ensure at step one that we articulate what the claims are directed to with enough specificity to ensure the step one inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this exclusionary principle lest it swallow all of patent law.”). 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. (quoting Mayo, 566 U.S. at 77 (alteration in original)). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. Appeal 2018-006200 Application 14/472,660 7 B. United States Patent and Trademark Office Revised Guidance5 The USPTO recently published revised guidance in the Federal Register concerning the application of § 101. Under the Revised Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes);6 and (2) additional elements that integrate the judicial exception into a practical application (see Manual for Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).7 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: (3) adds a specific limitation beyond the judicial exception that are not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, 5 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter “Revised Guidance,” or “Rev. Guid.”) (https://www.govinfo.gov/content/pkg/FR-2019-01-07/pdf/2018-28282.pdf). 6 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance (hereinafter “Step 2A(i)”). 7 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance (hereinafter “Step 2A(ii)”). Appeal 2018-006200 Application 14/472,660 8 specified at a high level of generality, to the judicial exception.8 See Revised Guidance. Step 2A(i) — Abstract Idea The Revised Guidance extracts and synthesizes key concepts identified by courts as abstract ideas to explain that the abstract idea exception includes the following groupings of subject matter, when recited as such in a claim limitation: (a) Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations; (b) 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); and (c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion). Under the Revised Guidance, if the claim does not recite a judicial exception (a law of nature, natural phenomenon, or subject matter within the enumerated groupings of abstract ideas above), then the claim is patent- eligible at Step 2A(i). This determination concludes the eligibility analysis, 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 2018-006200 Application 14/472,660 9 except in rare situations identified in the Revised Guidance.9 However, if the claim recites a judicial exception (i.e., an abstract idea enumerated above, a law of nature, or a natural phenomenon), the claim requires further analysis for a practical application of the judicial exception in Step 2A(ii). Step 2A(ii) — Practical Application If a claim recites a judicial exception in Step 2A(i), we determine whether the recited judicial exception is integrated into a practical application of that exception in Step 2A(ii) by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The seven identified “practical application” sections of the MPEP,10 cited in the Revised Guidance under Step 2A(ii), are: (1) MPEP § 2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field (2) MPEP § 2106.05(b) Particular Machine 9 In the rare circumstance in which an Examiner believes a claim limitation that does not fall within the enumerated groupings of abstract ideas should nonetheless be treated as reciting an abstract idea, the procedure described in of the Guidance for analyzing the claim should be followed. See Guidance, Section III.C. 10 See MPEP § 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer to revision [R-08.2017]. Appeal 2018-006200 Application 14/472,660 10 (3) MPEP § 2106.05(c) Particular Transformation (4) MPEP § 2106.05(e) Other Meaningful Limitations (5) MPEP § 2106.05(f) Mere Instructions To Apply An Exception (6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity (7) MPEP § 2106.05(h) Field of Use and Technological Environment If the recited judicial exception is integrated into a practical application as determined under one or more of the MPEP sections cited above, then the claim is not directed to the judicial exception, and the patent-eligibility inquiry ends. If not, then analysis proceeds to Step 2B. Step 2B — “Inventive Concept” or “Significantly More” It is possible that a claim that does not “integrate” a recited judicial exception under Step 2A(ii) is nonetheless patent eligible. For example, the claim may recite additional elements that render the claim patent eligible even though a judicial exception is recited in a separate claim element.11 The Federal Circuit has held claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B) because the additional elements recited in the claims provided “significantly more” than the recited judicial exception (e.g., because the additional elements were unconventional in combination).12 Therefore, if a claim has been determined to be directed to 11 See, e.g., Diehr, 450 U.S. at 187. 12 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings, Appeal 2018-006200 Application 14/472,660 11 a judicial exception under Revised Step 2A, we must evaluate the additional elements individually and in combination under Step 2B to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).13 Under the Revised Guidance, we must consider in Step 2B whether an additional element or combination of elements: (1) “Adds a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present;” or (2) “simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, which is indicative that an inventive concept may not be present.” See Revised Guidance, III.B. In the Step 2B analysis, an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds an evidentiary basis, and expressly supports a rejection in writing with, one or more of the following: 1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s). . . . LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014). 13 The patent eligibility inquiry may contain underlying issues of fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325. (Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018). Appeal 2018-006200 Application 14/472,660 12 2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well- understood, routine, conventional nature of the additional element(s). 3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s) . . . . 4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s) See Berkheimer Memo. If the Examiner or the Board determines under Step 2B that the element (or combination of elements) amounts to significantly more than the exception itself, the claim is eligible, thereby concluding the eligibility analysis. However, if a determination is made that the element and combination of elements does not amount to significantly more than the exception itself, the claim is ineligible under Step 2B, and the claim should be rejected for lack of subject matter eligibility. ANALYSIS Step 1 The Examiner finds the system of Claims 1–7 falls within the machine statutory category and thus recites one of the enumerated categories of eligible subject matter in 35 U.S.C. § 101. Final Act. 6. The Examiner finds Claims 8–20 falls within the article of manufacture statutory category and thus recites one of the enumerated categories of eligible subject matter in 35 Appeal 2018-006200 Application 14/472,660 13 U.S.C. § 101. Id. Therefore, the issue before us is whether the claims are directed to a judicial exception without significantly more. Based upon our review of the record in light of the Revised Guidance with respect to patent- eligible subject matter rejections under 35 U.S.C. § 101, we affirm the rejection of Claims 1–20. Step 2A(i): Does the Claim Recite a Judicial Exception? The Examiner finds the claims are directed to the abstract idea of automated evaluation of a property based on identification of a building permit. Final Act. 6. The Examiner analogizes the claims to those of Electric Power Group, LLC v. Alstom S.A, 830 F.3d 1350 (Fed. Cir. 2016) finding they relate to collecting, analyzing, and displaying information without more. Id. 8. Appellant contends the Examiner has not sufficiently explained why “the alleged abstract ideas of ‘automated evaluation of a property based on identified building permit’ and ‘analyzing a building permit’ are similar to the abstract ideas found in any of Electric Power Group (“collecting information, analyzing it, and displaying certain results of the collection and analysis”), Alice (“intermediate settlement”), Bilski (“risk hedging”), Fort Properties (“tax-free investing”), or SmartGene (“comparing new and stored information and using rules to identify a list of options.”). App. Br. 6. The preamble of Claim 1 recites: “[a] system comprising.” Table I compares the remaining limitations of Claim 1 to the categories of abstract ideas set forth in the Revised Guidance. Claim 1 Revised Guidance Appeal 2018-006200 Application 14/472,660 14 [a]14 physical data storage configured to store building permits data; and “Physical data storage” is a hardware limitation to which the Guidance is not applicable. [b] a computer system in communication with the physical data storage, the computer system comprising computer hardware, the computer system programed to: The “computer system” is a hardware limitation to which the Guidance is not applicable. [c] receive, by the computer system over a network communication channel, identification information associated with a subject property; Mere data-gathering, insignificant extra-solution activity step. Rev. Guid. 55, n. 31. [d] identify, by the computer system, one or more building permits associated with the subject property from the physical data storage; Mental process, i.e., concept performed in human mind. Rev. Guid. 52. [e] determine, by the computer system, an automated valuation for the subject property based at least in part on the one or more identified building permits; and Mental process, i.e., concept performed in human mind. Rev. Guid. 52. [f] store the determined automated valuation in the physical data storage. Data storage is merely insignificant extra-solution activity. Rev. Guid. 55, n. 31. Thus, under Step 2A(i), we find limitations [c]– [e] recites steps which may fit within the Revised Guidance category of “mental processes.” 14 Step designators, e.g., “[a]” were added to facilitate discussion. Appeal 2018-006200 Application 14/472,660 15 Step 2A(ii): Judicial Exception Integrated into a Practical Application? If the claims recite a patent-ineligible concept, as we conclude above, we proceed to the “practical application” Step 2A(ii) wherein we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. For the reasons which follow, we conclude that Appellant’s claims do not integrate the judicial exception into a practical application. MPEP § 2106.05(a) “Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field.” “In determining patent eligibility, examiners should consider whether the claim ‘purport(s) to improve the functioning of the computer itself’” or “any other technology or technical field.” MPEP § 2106.05(a). With respect to technological improvements, Appellant contends the features of independent Claims 1, 8, and 14 improve another technology or technical field. App. Br. 8. Appellant argues investors and governments may need building permit data to verify that a property is in compliance with city codes, but because there are many sources of building permit data, it may be difficult to locate information for a particular property without consulting several data sources. Id. 9 (citing Spec. ¶ 3). Appellant argues the claims permit the aggregation of building permit data across multiple jurisdictions. Id. Appeal 2018-006200 Application 14/472,660 16 The Enfish Court found the claims provided an improvement in computer function because “the claims are not simply directed to any form of storing tabular data, but instead are specifically directed to a self- referential table for a computer database.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (2016). Although Appellant argues “independent claim 1 recites a ‘physical data storage configured to store building permits data’” (App. Br. 10), the claims do not specify, nor does Appellant point to Specification disclosure, to suggest that either building permit data requires, or benefits from, any special form of data storage. We find that such generic recitations of computing elements fail to transform a patent ineligible concept into an eligible one. See Mortgage Grader, 811 F.3d at 1324–25 (generic computer components, such as an “interface,” “network,” and “database,” fail to satisfy the inventive concept requirement); Alice, 573 U.S. at 226 (“Nearly every computer will include a ‘communications controller’ and a ‘data storage unit’ capable of performing the basic calculation, storage, and transmission functions required by the method claims.”). MPEP § 2106.05(b) Particular Machine. This section is not relevant because the Bilski machine-or- transformation test is only applicable to method (process) claims of which there are none on appeal in the present application. MPEP § 2106.05(c) Particular Transformation. This section of the MPEP guides: “Another consideration when determining whether a claim recites significantly more is whether the claim effects a transformation or reduction of a particular article to a different state Appeal 2018-006200 Application 14/472,660 17 or thing.” “‘Transformation and reduction of an article to a different state or thing is the clue to the patentability of a process claim that does not include particular machines.’” Bilski, 561 U.S. at 658 (quoting Benson, 409 U.S. at 70). The claims select and analyze certain electronic data, i.e., building permit data. Spec. ¶ 2 (“The present disclosure relates to computer processes for aggregating and analyzing building permits associated with a real estate property.”). The selection of electronic data is not a “transformation or reduction of an article into a different state or thing constituting patent-eligible subject matter[.]” See In re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008) (emphasis added); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“The mere manipulation or reorganization of data . . . does not satisfy the transformation prong.”). Applying this guidance here, we conclude Appellant’s method claims fail to satisfy the transformation prong of the Bilski machine-or-transformation test. MPEP § 2106.05(e) Other Meaningful Limitations. This section of the MPEP guides: Diamond v. Diehr provides an example of a claim that recited meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. 450 U.S. 175 . . . (1981). In Diehr, the claim was directed to the use of the Arrhenius equation (an abstract idea or law of nature) in an automated process for operating a rubber-molding press. 450 U.S. at 177-78 . . . . The Court evaluated additional elements such as the steps of installing rubber in a press, closing the mold, constantly measuring the temperature in the mold, and automatically opening the press at the proper time, Appeal 2018-006200 Application 14/472,660 18 and found them to be meaningful because they sufficiently limited the use of the mathematical equation to the practical application of molding rubber products. 450 U.S. at 184, 187 . . . . In contrast, the claims in Alice Corp. v. CLS Bank International did not meaningfully limit the abstract idea of mitigating settlement risk. 573 U.S. . . . . In particular, the Court concluded that the additional elements such as the data processing system and communications controllers recited in the system claims did not meaningfully limit the abstract idea because they merely linked the use of the abstract idea to a particular technological environment (i.e., “implementation via computers”) or were well-understood, routine, conventional activity. MPEP § 2106.05(e). “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer.” Alice, 573 U.S. at 225. Similarly as for Alice, we find that “[t]aking the claim elements separately, the function performed by the computer at each step of the process is ‘[p]urely conventional.’” Id. “In short, each step does no more than require a generic computer to perform generic computer functions.” Id. We find that Appellant’s claims do not add meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. MPEP § 2106.05(f) Mere Instructions To Apply An Exception. Appellant does not persuasively argue that their claims do any more than to merely invoke generic computer components merely as a tool in which the computer instructions apply the judicial exception. Appeal 2018-006200 Application 14/472,660 19 MPEP § 2106.05(g) Insignificant Extra-Solution Activity. The claims store data. We find storing information to be a classic example of insignificant extra-solution activity. See, e.g., Bilski, 545 F.3d at 963 (en banc), aff’d sub nom, Bilski, 561 U.S. 593. MPEP § 2106.05(h) Field of Use and Technological Environment. [T]he Supreme Court has stated that, even if a claim does not wholly pre-empt an abstract idea, it still will not be limited meaningfully if it contains only insignificant or token pre- or post-solution activity—such as identifying a relevant audience, a category of use, field of use, or technological environment. Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013). We find the “physical data storage configured to store building permits data; and a computer system in communication with the physical data storage, the computer system comprising computer hardware,” limitations to be simply a field of use that attempts to limit the abstract idea to a particular technological environment. We do not find Appellant’s arguments to be persuasive because “[t]he courts have also identified examples in which a judicial exception has not been integrated into a practical application.” Rev. Guid. 55. The claims fail to recite a practical application where the additional element does more than generally link the use of a judicial exception to a particular technological environment or field of use. Id. The mere application of an abstract idea in a particular field is not sufficient to integrate the judicial exception into a practical application. See id. at n.32. In view of the foregoing, we conclude the claims are “directed to” a judicial exception. Appeal 2018-006200 Application 14/472,660 20 1. Well-understood, routine, conventional. Because the claims recite a judicial exception and do not integrate that exception into a practical application, we must then reach the issue of whether the claim adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field. Revised Guidance, 84 Fed. Reg. at 56. The written description describes the claimed computer system consistent with its being “well-understood, routine, [and] conventional”: “[c]ode modules or any type of data may be stored on any type of non- transitory computer-readable medium, such as physical computer storage including hard drives, solid state memory, random access memory (RAM), read only memory (ROM), optical disc, volatile or non-volatile storage, combinations of the same and/or the like.” Spec. ¶ 125. 2. Specified at a high level of generality. It is indicative of the absence of an inventive concept where the claims simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Rev. Guid., 56. The claims fail to recite any specific steps of an algorithm, nor doesAppellant cite Specification disclosure for the required specificity. We find the limitations are specified at such a high level of generality consistent with the absence of an inventive concept. Therefore, we conclude that none of the claim limitations, viewed “both individually and as an ordered combination,” amount to significantly more than the judicial exception in order to sufficiently transform the nature of the claims into Appeal 2018-006200 Application 14/472,660 21 patent-eligible subject matter. See Alice, 573 U.S. at 217 (internal quotations omitted) (quoting Mayo, 566 U.S. at 79). In view of the foregoing, we sustain the rejection of claims 1–20 under 35 U.S.C. § 101. CLAIMS 1–7: OBVIOUSNESS OVER OVER HUTCHINSON, MOUDY, AND LEIBOWITZ. Appellant presents various contentions asserting no combination of the prior art teaches “determine, by the computer system, an automated valuation for the subject property based at least in part on the one or more identified building permits; and store the determined automated valuation in the physical data storage,” as recited in independent Claim 1. App. Br. 13. The Examiner finds “Mouldy” [sic] discloses the generation of a report containing automated valuation of property based on economic indicia and other parameters such as crime and foreclosure. Ans. 6. (citing Moudy, ¶ 4). The Examiner further finds Moudy discloses building permit data is considered as among “property valuation parameters.” Id. The Examiner finds Moudy teaches “various types of automated valuation models have been developed in an attempt to automate the process of property value estimation.” Ans. 7. (citing Moudy, ¶ 4). Appellant’s Reply Brief responds solely with respect to dependent Claim 2: “[t]he Examiner continues to allege that the ‘automated valuation models’ in paragraph [0004] of Moudy discloses the ‘automated valuation model’ recited in claim 2. The Appellant respectfully disagrees for the reasons provided in the Appeal Brief.” Reply Brief (unpaginated) (page 12 of the Electronic Record, “R. 12”). Appeal 2018-006200 Application 14/472,660 22 Claim 2 recites: “[t]he system of claim 1, wherein the automated valuation is determined using an automated valuation model.” Claim 2 requires “an” automated valuation model, but is not limited to any specific automated valuation model. We are not persuaded the Examiner errs in rejecting Claims 1–7 under 35 U.S.C. § 103. CLAIMS 8–13: OBVIOUSNESS OVER OVER HUTCHINSON, MOUDY, AND LEIBOWITZ. Appellant contends: none of Hutchinson, Moudy, or Leibowitz, either alone or in combination, discloses or suggests at least the features of “(d) determining, by the data processor of the computer system, a product or service associated with the identified building permits [i.e., associated with incomplete projects]; and (e) storing, by the data processor of the computer system through the communication channel, the determined product or service as a potential sales lead in the at least one data repository,” as recited in independent Claim 8. App. Br. 17. The Examiner fails to find the prior art teaches products associated with incomplete building projects. See Ans. 7. We therefore, decline to sustain the rejection of Claims 8–13. CLAIMS 14–20: OBVIOUSNESS OVER OVER HUTCHINSON, MOUDY, AND LEIBOWITZ. Appellant contends none of Hutchinson, Moudy, or Leibowitz, either alone or in combination, discloses or suggests at least the features of “(d) identifying, by the computer system, one or more discrepancies between the Appeal 2018-006200 Application 14/472,660 23 identified property information and the accessed building permits data,” as recited in independent Claim 14. App. Br. 19. The Examiner finds Hutchinson teaches a “variance” which indicates “errors,” “discrepancies,” and “differences” between the identified property information and “permit” data. Final Act. 28 (citing Hutchinson, ¶ 84). The Examiner finds Hutchinson teaches that if the file was created earlier, the authorized user can search for the “correct files” stored in the jurisdiction database by permit number search for any associated files, wherein additional information should be uploaded or monitored. Id. In the Answer, the Examiner finds any discrepancies between the identified property information and the accessed building permits data, as claimed is to be considered “non-functional descriptive material,” and thus, is not entitled to patentable weight. Ans. 7. We disagree that whether a database contains specified information may be dismissed as non-functional descriptive material. We find the prior art fails to teach at least one claimed limitation. We decline to sustain the rejection of Claims 14–20 DECISION The rejection of Claims 1–20 under 35 U.S.C. § 101 is AFFIRMED. The rejection of Claims 1–7 under 35 U.S.C. § 103 is AFFIRMED. The rejection of Claims 8–20 under 35 U.S.C. § 103 is REVERSED. 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). Appeal 2018-006200 Application 14/472,660 24 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation