Elliott, Richard F. et al.

Patent Trials and Appeals Board

May 18, 2020

13919435 - (D) (P.T.A.B. May. 18, 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.
13/919,435 06/17/2013 Richard F. Elliott 1110.0015-US 9784
65770 7590 05/18/2020
Thrive IP
Jeremy Stipkala
5401 NETHERBY LANE
SUITE 1201
NORTH CHARLESTON, SC 29420
EXAMINER
CHEN, GEORGE YUNG CHIEH
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
05/18/2020 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):
JEREMY.STIPKALA@Thrive-IP.COM
docket@thrive-ip.com
rebecca.seaman@thrive-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD F. ELLIOTT and CRAIG LUCAS
____________

Appeal 2019-004602
Application 13/919,435
Technology Center 3600
____________

Before NINA L. MEDLOCK, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–6, 13–15, 17, 18, and 21. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

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 November 15, 2018) and Reply Brief (“Reply Br.,” filed April 30,
2019), and the Examiner’s Answer (“Ans.,” mailed March 14, 2019), and
Final Office Action (“Final Act.,” mailed June 4, 2018). Appellant identifies
Vacation Finder, LLC as the real party in interest (Appeal Br. 3).
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CLAIMED INVENTION
Appellant describes that the present disclosure “is directed broadly to
an online vacation rental by owner marketplace that has access to hundreds
of properties around the world” (Spec. ¶ 5).
Claims 1, 13, and 21 are the independent claims on appeal. Claim 13,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
13. A method of electronically renting properties,
comprising:
[(a)] entering rental property criteria into an interactive
portal, a rental property belonging to a homeowner being
associated with the rental property criteria;
[(b)] entering management details into the interactive
portal, the management details including a management agency
located proximate the rental property and having a service
contract with the homeowner, the interactive portal coded to
accept the rental property upon verification of the service
contract;
[(c)] setting a rental budget and value by entering
property parameters into the interactive portal;
[(d)] finding a best match rental property from among
hundreds of properties around the world in real time based on the
management details; and
[(e)] producing and returning a concierge form in real
time with the best match rental property.
REJECTIONS
Claims 13–15, 17, and 18 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.2

2 The Examiner has withdrawn the rejection of claims 1–6 and 21 under
35 U.S.C. § 101 (Ans. 3).
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Claims 1–3 and 6 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mueller et al. (US 2003/0225599 A1, published Dec. 4,
2003) (“Mueller”), Vatanen (US 2003/0074557 A1, published Apr. 17,
2003), and Mulholland et al. (US 2008/0215384 A1, published Sept. 4,
2008) (“Mulholland”).
Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Mueller, Vatanen, Mulholland, and Pearsall et al.
(US 2013/0174085 A1, published July 4, 2013) (“Pearsall”).
Claims 13–15 and 18 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mueller, Galloway (US 2008/0065429 A1, published
Mar. 13, 2008), Vatanen, and Mulholland.
Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Mueller, Galloway, Vatanen, Mulholland, and Torrengegra
(US 2009/0287596 A1, published Nov. 19, 2009).
Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Mueller, Vatanen, Mulholland, and Baron et al. (US 2010/0287108 A1,
published Nov. 11, 2010) (“Baron”).
ANALYSIS
Patent-Ineligible Subject Matter
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).
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The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
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).
After Appellant’s Appeal Brief was filed, but before the Examiner’s
Answer was 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 “2019 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
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application of that exception. Id. at 50. The 2019 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
Step One of the Mayo/Alice Framework (2019 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 2019 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. 2019 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.

3 The USPTO issued an update on October 17, 2019 (the “October 2019
Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) clarifying the
2019 Revised Guidance in response to public comments.
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Here, noting that the § 101 rejection of claims 1–6 and 21 has been
withdrawn, and treating independent claim 13 as representative, the
Examiner restates the § 101 rejection in the Answer with reference to
claim 13. There, the Examiner explains that claim 13 describes “a series of
steps of conducting a contractual agreement or business process by
collecting . . . data and process[ing] the collected data . . . to generate a form
that includes properties that are designated as [a] best match” (Ans. 4) — a
process that the Examiner reasons is similar to an MLS (Multiple Listing
Service) listing for real estate transactions “where [an] owner/landlord
submits property criteria and listing agents’ info (akin to the management
detail of claim 13), [and] agents of [a] buyer/renter . . . then enter[ ]
parameters such as listing price into the listing service to find properties that
match[ ] the entered criteria and receive a produced search result” (id.). The
Examiner determines, “the recited limitations . . . fall under ‘organizing
human activities,’” i.e., that claim 13 recites an abstract idea” (id.), and that
the claim is “directed to” an abstract idea because the recited judicial
exception is not integrated into a practical application (id. at 4–5). The
Examiner also determines that claim 13 does not include additional elements
sufficient to amount to significantly more than the abstract idea itself (id.
at 5–6).
Appellant variously argues that the Examiner erred in determining
that claim 13 is directed to an abstract idea (Appeal Br. 9–10; Reply Br. 1–
5). But none of Appellant’s arguments is persuasive.
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
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matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that claim 13 focuses on an abstract idea, and not on any
improvement to technology and/or a technical field.
The Specification is titled “METHODS OF RESERVING AND
MANAGING VACATION RENTAL PROPERTIES,” and describes, in the
Background section, that conventional vacation rental websites are passive,
lack functionality, and do not assure customers of professional services or
satisfaction (Spec. ¶ 2). Owners of properties posted on conventional
vacation rental websites also are often inaccessible when guests have
problems with the rental properties; therefore, a guest or renter may have to
wait for days to have an issue resolved (id.).
The Specification describes that the present disclosure is directed to
an online vacation rental by owner marketplace, where all the properties
listed on concierge websites have rental management contracts with local
vacation rental companies, property management companies or licensed
agents (id. ¶ 5). “The property owner has complete control of his inventory
as well as the ability to negotiate rental rates directly with his guests”; and
renters or guests have the full support of a local, professional service
organization to resolve any questions, problems, or maintenance issues that
may arise during their stay (id.).
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Consistent with this disclosure, claim 13 recites a method of
electronically renting properties comprising: (1) collecting rental property
information, including rental property criteria, property management details
(including a management agency located proximate the rental property
having a service contract with the homeowner), and rental parameters
(e.g., asking price and rental term), via an interactive portal coded to accept
the rental property upon verification of the service contract, i.e.,
entering rental property criteria into an interactive portal,
a rental property belonging to a homeowner being associated
with the rental property criteria;
entering management details into the interactive portal, the
management details including a management agency located
proximate the rental property and having a service contract with
the homeowner, the interactive portal coded to accept the rental
property upon verification of the service contract; [and]
setting a rental budget and value by entering property
parameters into the interactive portal
(steps (a), (b), and (c)); (2) identifying a best match rental property based on
the management details, i.e., “finding a best match rental property from
among hundreds of properties around the world in real time based on the
management details” (step (d)); and (3) “producing and returning a
concierge form in real time with the best match rental property” (step (e)).
These limitations, when given their broadest reasonable interpretation, recite
renting properties by collecting and storing information regarding the
various properties; analyzing the collected information to identify a best
match from among the available properties based on user criteria; and
reporting the results of the analysis, i.e., the identity of the best match
property, i.e., a commercial interaction, which is a method of organizing
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human activity and, therefore, an abstract idea. See 2019 Revised Guidance,
84 Fed. Reg. at 52.
The Federal Circuit has held similar concepts abstract. Thus, for
example, the Federal Circuit has held that abstract ideas include merely
collecting data, analyzing data, and displaying the results of the collection
and analysis, including when limited to particular content. See, e.g.,
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340
(Fed. Cir. 2017) (identifying the abstract idea of collecting, displaying, and
manipulating data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016) (characterizing collecting information, analyzing
information by steps people go through in their minds, or by mathematical
algorithms, and presenting the results of collecting and analyzing
information, without more, as matters within the realm of abstract ideas);
see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir.
2018) (“As many cases make clear, even if a process of collecting and
analyzing information is ‘limited to particular content’ or a particular
‘source,’ that limitation does not make the collection and analysis other than
abstract.”) (quoting Elec. Power Grp., 830 F.3d at 1353, 1355 (citing
cases)). Identifying a best match rental property based on management
details, i.e., a comparison process, also is substantially similar to other
concepts that courts have held abstract. See, e.g., Berkheimer v. HP Inc.,
881 F.3d 1360, 1366 (Fed. Cir. 2018) (concluding that parsing, comparing,
storing, and editing data are abstract ideas); SmartGene, Inc. v. Advanced
Biological Labs., 555 F. App’x 950 (Fed. Cir. 2014) (comparing new and
stored information and using rules to identify options is an abstract idea).
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Having concluded that claim 13 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).
The only additional element recited in claim 13, beyond the abstract
idea, is an “interactive portal” — an element that the Examiner found, and
Appellant does not dispute, is disclosed as a generic computer component
(Ans. 5). We find no indication in the Specification that the operations
recited in claim 13 require any specialized computer hardware or other
inventive computer components, i.e., a particular machine, invoke any
allegedly inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”). We also find nothing of record that
persuades us that the claimed invention otherwise integrates the abstract idea
into a “practical application,” as that phrase is used in the 2019 Revised
Guidance.4

4 The 2019 Revised Guidance references the MANUAL OF PATENT
EXAMINING PROCEDURE (“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. 2019 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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Appellant contends here that the 2019 Revised Guidance “supports
the practical application of claim 13,” i.e., that claim 13 is not “directed to”
an abstract idea because the claimed invention effects a transformation of a
particular article into a different state or thing (Reply Br. 2–3). More
particularly, Appellant argues that claim 13 is patent eligible because it has
“taken information from disparate sources,” e.g., an end user’s information,
a property owner’s information, a local service provider’s information, and
an aggregator’s information, and “created a heretofore unknown concierge
form as defined by the present application[,] i.e., created a different thing”
(Reply Br. 3 (citing the Declaration of Michael Allen Deaton (the “Deaton
Declaration”) ¶ 9)).
The Federal Circuit has recognized that the machine-or-
transformation test,5 although not the only test, “can provide a ‘useful clue’”
to patent eligibility under the Mayo/Alice framework. Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (quoting Bilski v. Kappos,
561 U.S. 593, 594 (2010)). As such, satisfying either prong of that test may
integrate an abstract idea into a practical application. See 2019 Revised
Guidance, 84 Fed. Reg. at 55 nn.27–28 (citing MPEP § 2106.05(b), (c)).
Yet, Appellant’s argument here is not persuasive at least because the alleged
“transformation” is, at best, merely a manipulation of data, which is not
sufficient to meet the transformation prong under 35 U.S.C. § 101. See
Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972) (a computer based

5 Under the machine-or-transformation test, a claimed process is patent
eligible if: (1) it is tied to a particular machine or apparatus, or (2) it
transforms a particular article into a different state or thing. In re Bilski,
545 F.3d 943, 954 (Fed. Cir. 2008), aff'd sub nom. Bilski v. Kappos,
561 U.S. 593 (2010).
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algorithm that merely transforms data from one form to another is not
patent-eligible).
We also are not persuaded of Examiner error to the extent Appellant
maintains that claim 13 is patent eligible because “[t]he steps of
Claim 13 . . . do not monopolize an abstract idea” (Reply Br. 3). Although
the Supreme Court has described “the concern that drives [the exclusion of
abstract ideas from patent-eligible subject matter] as one of pre-emption,”
Alice Corp., 573 U.S. at 216, characterizing preemption as a driving concern
for patent eligibility is not the same as characterizing preemption as the sole
test for patent eligibility. “The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at
216). “[P]reemption may signal patent ineligible subject matter, [but] the
absence of complete preemption does not demonstrate patent eligibility.” Id.
We conclude, for the reasons outlined above, that claim 13 recites a
method of organizing human activity, i.e., an abstract idea, and that the
claim does not include additional elements or a combination of elements that
integrates the abstract idea into a practical application. Accordingly, we
agree with the Examiner that claim 13 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 13 is directed to an abstract idea, we next consider under Step 2B of
the 2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 13 adds specific limitations beyond the judicial exception that
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are not “well-understood, routine, conventional” activity in the field, or
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception.
Appellant argues that “expert declarations have been submitted
providing evidence that Claim 13 is not a well-understood, routine, or
conventional activity” (Reply Br. 3). But, that argument is not persuasive at
least because “the relevant inquiry is not whether the claimed invention as a
whole is unconventional or non-routine.” BSG Tech LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). Instead, the question under
step two of the Mayo/Alice framework (i.e., step 2B) is whether the claim
includes additional elements, i.e., elements other than the abstract idea itself,
that “‘transform the nature of the claim’ into a patent-eligible application.”
Alice Corp., 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). See also
Mayo, 566 U.S. at 72–73 (requiring that “a process that focuses upon the use
of a natural law also contain other elements or a combination of elements,
sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
natural law itself” (emphasis added)).
The Examiner determined here, and we agree, that the only claim
element beyond the abstract idea is an “interactive portal,” i.e., a generic
computer component (Ans. 5). Appellant cannot reasonably contend, nor
does Appellant, that there is insufficient factual support for the Examiner’s
determination that the operation of this portal is well-understood, routine, or
conventional, where, as here, there is nothing in the Specification to indicate
that the operations recited in claim 13 require any specialized hardware or
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inventive computer components or that the claimed invention is
implemented using other than a generic computer component to perform
generic computer functions, e.g., receiving, storing, and processing
information. Indeed, the Federal Circuit, in accordance with Alice, has not
been swayed by advanced arguments, where claims have been defended as
involving an inventive concept based “merely on the idea of using existing
computers or the Internet to carry out conventional processes, with no
alteration of computer functionality.” Berkheimer v. HP Inc., 890 F.3d
1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (internal citations
omitted); see also BSG Tech LLC, 899 F.3d at 1291 (“BSG Tech does not
argue that other, non-abstract features of the claimed inventions, alone or in
combination, are not well-understood, routine and conventional database
structures and activities. Accordingly, the district court did not err in
determining that the asserted claims lack an inventive concept.”).
Appellant also misapprehends the controlling precedent to the extent
Appellant maintains that claim 13 is patent eligible because the claim is
novel and/or non-obvious (Reply Br. 4–5 (arguing that claim 13 is patent
eligible because claim addresses a long-felt need in the vacation rental
industry)). Neither a finding of novelty nor a non-obviousness
determination automatically leads to the conclusion that the claimed subject
matter is patent eligible. Although the second step in the Mayo/Alice
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for “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.’” Alice Corp., 573 U.S. at 217–18 (citation
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omitted). “Groundbreaking, innovative, or even brilliant discovery does not
by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious
claim directed to a purely abstract idea is, nonetheless, patent ineligible. See
Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188–89
(1981) (“The ‘novelty’ of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 13 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of claim 13. We also sustain the
Examiner’s rejection under 35 U.S.C. § 101 of dependent claims 14, 15, 17,
and 18, which are not argued separately.
Obviousness
Independent Claim 1 and Dependent Claims 2–6
Appellant argues that the Examiner erred in rejecting independent
claim 1 under 35 U.S.C. § 103(a) at least because Mueller, on which the
Examiner relies, does not disclose or suggest a concierge form, as called for
in claim 1 (Appeal Br. 13–14). Appellant, thus, maintains that although
“[t]he cited reference appears to suggest some type of transient display,” it
“does not describe or suggest the concierge form as recited by Claim 1”
(id.).
Responding to Appellant’s argument, the Examiner asserts in the
Answer that “Mueller discloses, at least, that listing company logos are
incorporated into [the] returned form”; that “such logo inclusion would
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indicate a company having someone work for the company is tasked to take
care (at least to rent) out the property”; and “[t]herefore, Mueller’s returned
form would read on the claimed concierge form” (Ans. 6–7). Yet, by the
Examiner’s own admission, Mueller does not explicitly disclose “the
[service] contract being verified before the suggested property is published
to the user” (Final Act. 7).
The Examiner cites Vatanen to cure the deficiency of Mueller (Final
Act. 8). And the Examiner concludes that it would have been obvious to one
of ordinary skill in the art at the time of the invention to include “Vatanen’s
requirement to conduct business and Mulholland’s well-known scale of
property inventories in the system of Mueller,” because the claimed
invention is “merely a combination of old elements, and in the combination
each element merely would have performed the same function as it did
separately, and one of ordinary skill in the art would have recognized that
the results of the combination were predictable” (id.).
Vatanen is directed to a method and system for managing personal
property, i.e., an “object,” such as an article, device, apparatus, system, or
information (Vatanen ¶ 2), and discloses that an unambiguous identifier
individualizing the object is created based on data or information, e.g., a
serial number, attached to the object (id.). Vatanen discloses, with reference
to Figure 1, that a user may wish to list or register a particular object, e.g., a
valuable camera, as his or her property, and that in order to do so, the user
must first enter into a service contract with a third party service operator
offering property management services (id. ¶ 31). In conjunction with this
process, the user provides the service operator with information about him or
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herself (e.g., name, address, telephone number), and the service operator
creates the necessary key pair(s) for the user (id.).
Vatanen discloses that the user may register the property, e.g., the
user’s camera, over the user’s mobile phone, in which case, the user locates
the serial number of the camera, and creates, using his or her mobile phone,
a message that includes the located serial number (id. ¶ 33). The user
digitally signs the serial number (or other article identifier) with his or her
private signing key, and transmits the message to the service operator (id.
¶ 34). Upon receipt, the service operator verifies the validity of the user’s
key and signs the received message using the private signing key of the
service operator; the information signed by the service operator is then saved
and stored in a database specifically maintained for this purpose (id. ¶ 35).
When the unique identifier has been registered in the database, the service
operator sends the holder of the signing key a signed acknowledgement
message to thereby notify the owner of the article that the registration has
successfully been effected (id. ¶ 36). In conjunction with the registration,
the property owner may additionally place use restrictions on the device, and
this additional information may also be attached to the registration
acknowledgement message (id.).
Vatanen discloses that the system of Figure 1 can be used in various
circumstances to, for example, verify the identity of the alleged owner of
particular property; therefore, a potential purchaser may confirm the identity
of the current owner of the property before making the purchase (id. ¶ 38).
Vatanen also discloses that the registered article may be a device or a piece
of software and the registration may be intended to restrict its use such that
the device may only be used for a certain limited period of time or only
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within a predetermined service area (id. ¶ 43). Vatanen, thus, describes that
the device may, for example, be a rental car or a vehicle provided to a
potential purchaser for a test drive and equipped with a computer
programmed to permit the vehicle to be used only within a certain region
and/or for a preset period of time or distance; these usage restrictions can
then only be changed by “an acknowledgement message of a registering
authority or a registration database service and/or by a digitally signed
acknowledgement message of the recorded owner” (id.).
The Examiner cites paragraph 31 of Vatanen as disclosing “the
[service] contract being verified before the suggested property is published
to the user” (Final Act. 8). However, we agree with Appellant that Vatanen
is directed to “a thoroughly dissimilar field of endeavor from the vacation
rentals industry and is not analogous prior art that should be relied upon for
the present rejection” (Appeal Br. 14). The “service contract” disclosed in
Vatanen also is not a “service contract,” as recited in claim 1, which, as
described in the Specification, is provided to ensure that vacation property
renters have the full support of a local, professional service organization to
resolve any questions, problems or maintenance issues that may come up
during their stay (see, e.g., Spec. ¶ 21).
The non-analogous art test considers the threshold question whether a
prior art reference is “too remote to be treated as prior art.” In re Clay,
966 F.2d 656, 658 (Fed. Cir. 1992) (quoting In re Sovish, 769 F.2d 738, 741
(Fed. Cir. 1985)). A prior art reference is, thus, considered analogous only if
the reference is either (1) within the inventor’s field of endeavor, regardless
of the problem addressed; or (2) reasonably pertinent to the particular
problem with which the inventor is involved. Clay, 966 F.2d at 658–59.
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The Examiner maintains here that Vatanen is analogous art because
“the cited section of Vatanen shows operation of a property listing website”
(Ans. 7). But, the Examiner does not set forth adequately the connection
between vacation property rentals and Vatanen’s property management
system. And such a connection is not readily apparent from the disclosures
themselves.
The Examiner also has not set forth an analysis sufficient to show that
the claimed invention and Vatanen are directed to the same problem. The
claimed invention is concerned with ensuring that vacation property renters
have access to local vacation rental companies, property management
companies or licensed agents, who can address any problems, e.g.,
maintenance issues, which occur during the rental term. Vatanen, on the
hand, is concerned with allowing potential purchasers of property to verify
property ownership before completing a purchase and with imposing
restrictions and/or limitations on the use of particular property. The
Examiner has not established, by way of specific factual findings, that the
problem addressed in Vatanen is in any way relevant, let alone the same or
similar, to that addressed by Appellant. Therefore, Vatanen has not been
shown to be analogous art that can be combined with Mueller.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103. For the same reasons, we
also do not sustain the Examiner’s rejection of dependent claims 2–6.
Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims
are nonobvious if the independent claims from which they depend are
nonobvious”).
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Independent Claims 13 and 21 and Dependent Claims 14, 15, 17, and 18
Independent claims 13 and 21 include language substantially similar
to the language of independent claim 1, and stand rejected based on the same
rationale, regarding Vatanen, applied with respect to claim 1 (Final Act. 12,
15). Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 103(a) of independent claims 13 and 21, and claims 14, 15, 17, and 18,
which depend from claim 13, for the same reasons set forth above with
respect to claim 1.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13–15, 17,
18
101 Eligibility 13–15, 17,
18

1–3, 6 103(a) Mueller, Vatanen,
Mulholland
1–3, 6
4, 5 103(a) Mueller, Vatanen,
Mulholland,
Pearsall
4, 5
13–15, 18 103(a) Mueller, Galloway,
Vatanen,
Mulholland
13–15, 18
17 103(a) Mueller, Galloway,
Vatanen,
Mulholland,
Torrengegra
17
21 103(a) Mueller, Vatanen,
Mulholland, Baron
21
Overall
Outcome
1–6, 13–15,
17, 18, 21

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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