Emison, Joseph Tierney Masters.

Patent Trials and Appeals Board

Oct 1, 2019

15198429 - (D) (P.T.A.B. Oct. 1, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/198,429 06/30/2016 Joseph Tierney Masters Emison 261-05 8247
88145 7590 10/01/2019
Thompson Patent Law Offices PC
201 S. Lakeline Blvd., Suite 704
Cedar Park, TX 78613
EXAMINER
WARDEN, MICHAEL J
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
10/01/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
eofficeaction@appcoll.com
patents@thompsonpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________
Ex parte JOSEPH TIERNEY MASTERS EMISON
____________________

Appeal 2018-007730
Application 15/198,429
Technology Center 3600
____________________

Before JUSTIN BUSCH, JOHN D. HAMANN, and JASON M. REPKO,
Administrative Patent Judges.

BUSCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–30, which constitute all pending
claims in this application. We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant’s claimed invention generally relates to determining roof
age and an associated confidence score based on roof-age data in a database

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as BuildFax,
Inc. Br. 3.
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“for use in the homeowners insurance industry.” Spec. ¶ 2. The claimed
invention relates to using permit information of other properties to estimate
the age of a target property’s roof, which can be used to determine whether
to inspect and properly insure the target property. Spec. ¶¶ 7–11. Claims 21
and 28–30 are independent claims. Claim 21 is reproduced below:
21. A computer-implemented method for estimating roof age
of a target structure, the method comprising:
identifying a target structure for which an estimated roof
age is desired;
extracting from building permit documentation, roof
permit documentation, inspection documentation by permitting
authorities, roof warranty documentation, or roof material
delivery documentation a year in which a roof replacement was
performed for a plurality of structures located within a selected
geographical region encompassing the target structure, which
documentation is provided in computer-readable form and stored
in a non-transitory computer-readable medium;
using a computer processor, determining a coverage area
within the selected geographical region that has a desired level
of roof enforcement by a permitting authority and is based on one
or more of the following:
(i) a percentage of the number of roof permits
compared with a total number of overall permits for the
selected geographical region,
(ii) a percentage of the number of roof permits
compared with population of the selected geographical
region, or
(iii) a percentage of the number of roof permits
compared with the number of structures located in the
selected geographical region;
estimating a roof age of the target structure, without roof
replacement information for the target structure and by using a
computer processor, by determining an area average roof age for
the coverage area as an estimated roof age of the target structure;
returning the estimated roof age of the target structure to a
user.
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REJECTION
Claims 21–30 stand rejected under 35 U.S.C. § 101 as being directed
to ineligible subject matter. Final Act. 5–8.
ANALYSIS
The Examiner concludes claims 21–30 are directed to judicially
excepted subject matter. Final Act. 5–8; Ans. 4–7. Appellant generally
argues the § 101 rejection of all claims as a group. Br. 9–19. Appellant notes
the differences in the recited claim language between independent claims 21
and 28–30, alleging different elements of these claims add significantly
more to the abstract idea. Br. 12–16. We generally discuss the claims with
respect to claim 21, but address the differences in the limitations recited in
claims 28–30. Appellant chose not to file a reply brief.
The Examiner concludes the recited steps of determining a coverage
area, estimating a roof age, calculating a weighted area average roof age,
determining an enforcement level, determining a confidence score, and
auditing data just describe the concept of estimating a roof age, which is an
abstract idea. Final Act. 5; see also Final Act. 6 (determining claim 30 also
“is directed to a mathematical algorithm,” because it calculates a roof age
from a mathematical model). The Examiner explains that the claims’
relationship to tangible objects (i.e., a roof) does not change the character of
the claims as being directed to the abstract idea of estimating a roof age.
Final Act. 3. The Examiner determines the additional computer elements
“are recited at a high level of generality [and] provide conventional
computer functions that do not add meaningful limits to practicing the
abstract idea,” either individually or as an ordered combination. Final
Act. 5–6. The Examiner determines the additional steps related to extracting
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information, receiving data, converting data into a standardized format, and
returning information to a user do not render the claims eligible because
“[t]hese steps are mere extra-solution activities, formatting, gathering and
sending data . . . recited at a high level of generality and are recited as
performing generic computer functions routinely used in computer
applications.” Final Act. 7. The Examiner also determines the additional
elements individually are well-understood, routine, and conventional
computer elements or functions that simply implement the abstract idea on a
computer and, when taken in combination, add nothing other than what the
elements add individually because their collective function fails to improve a
computer or other technology. Final Act. 7; see also Ans. 4–5 (explaining
that using a unique set of data or particular calculations using certain data,
even if novel, does not change the character of the claim or render the claims
eligible as being directed to more than an abstract idea).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the United States Patent and Trademark
Office recently published revised guidance for evaluating subject matter
eligibility under 35 U.S.C. § 101, specifically with respect to applying the
Alice framework. USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).
If a claim falls within one of the statutory categories of patent
eligibility (i.e., a process, machine, manufacture, or composition of matter),
we determine whether the claim is directed to one of the judicially
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
abstract idea). Alice, 573 U.S. at 217. As part of our inquiry, we “look at the
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‘focus of the claimed advance over the prior art’ to determine if the claim’s
‘character as a whole’ is directed to excluded subject matter.” Affinity Labs
of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). The
Guidance directs us to address this inquiry using the following two prongs of
analysis: (i) does the claim recite a judicial exception (e.g., an abstract idea),
and (ii) if so, is the judicial exception integrated into a practical application.
84 Fed. Reg. at 54.
Under the Guidance, if the judicial exception is integrated into a
practical application, the claim is patent eligible under § 101. 84 Fed. Reg. at
54–55. If the claim is directed to a judicial exception (i.e., the claim both
recites a judicial exception and fails to integrate the exception into a
practical application), we next determine whether the claim provides an
inventive concept, which includes determining whether any element, or
combination of elements, amounts to significantly more than the judicial
exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56.
Here, we conclude the claims are directed to mental processes (i.e., a
concept performed in the human mind, such as, an observation, evaluation,
judgment, and opinion), which are abstract ideas. See 84 Fed. Reg. at 52.
The claims are directed to estimating the age of a target structure’s roof, and
a level of confidence in the estimate, using non-target structure information.
This is consistent with how Appellants describe the claimed invention. See
Spec. ¶¶ 2 (“the present invention relates to a computer-implemented
method for determining roof age and a roof age confidence score based on
information stored in a database of roof-age source information”), 7–11
(describing embodiments using various information to estimate roof age);
Br. 6 (“Independent claim 21 and its dependents and claims 28-30 relate to
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computer-implemented methods for estimating roof age of a target structure.
The methods rely on algorithmic rules to estimate the roof age of a target
structure based on information from non-target structures.”), 9 (“Appellant's
claims are directed to specific mathematical rules for estimating the roof age
of a target structure”).
Claim 21 is reproduced below, with the claim limitations that recite
elements of the abstract idea of estimating the age of a target structure’s
roof, and a level of confidence in the estimate, using non-target structure
information emphasized in italics:
21. A computer-implemented method for estimating roof age
of a target structure, the method comprising:
identifying a target structure for which an estimated roof
age is desired;
extracting from building permit documentation, roof
permit documentation, inspection documentation by permitting
authorities, roof warranty documentation, or roof material
delivery documentation a year in which a roof replacement was
performed for a plurality of structures located within a selected
geographical region encompassing the target structure, which
documentation is provided in computer-readable form and stored
in a non-transitory computer-readable medium;
using a computer processor, determining a coverage area
within the selected geographical region that has a desired level
of roof enforcement by a permitting authority and is based on
one or more of the following:
(i) a percentage of the number of roof permits
compared with a total number of overall permits for the
selected geographical region,
(ii) a percentage of the number of roof permits
compared with population of the selected geographical
region, or
(iii) a percentage of the number of roof permits
compared with the number of structures located in the
selected geographical region;
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estimating a roof age of the target structure, without roof
replacement information for the target structure and by using a
computer processor, by determining an area average roof age for
the coverage area as an estimated roof age of the target
structure;
returning the estimated roof age of the target structure to
a user.
More particularly, estimating the age of a target structure’s roof, and a
level of confidence in the estimate, using non-target structure information
comprises (i) identifying a target structure—an observation and evaluation
or judgment; (ii) extracting (or receiving) information from various sources
(i.e., permit, inspection, warranty, and material delivery documentation)—an
observation; (iii) determining a relevant region based on a mathematical
relationship identified in the collected information—an evaluation or
judgment; (iv) estimating the target structure’s roof age based on a
mathematical relationship of non-target structures in the relevant region—a
judgment, opinion, or mathematical determination; and (v) providing the
results of the estimating step—an observation or opinion.
If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot be performed practically in the mind. See Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the
exception of generic computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.”); see also CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372, 1375–76 (Fed. Cir. 2011) (holding
that the incidental use of “computer” or “computer readable medium” does
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not make a claim otherwise directed to process that “can be performed in the
human mind, or by a human using a pen and paper” patent eligible,
explaining that “purely mental processes can be unpatentable, even when
performed by a computer”); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 71 (2012) (explaining mental processes are not
patentable); 84 Fed. Reg. at 52–53 nn.14–15.
The concept recited in the claims is simply a series of observations,
evaluations, and judgements for determining relevant data and calculating a
roof age based on the relevant data. Consistent with our Guidance and case
law, we conclude that estimating the age of a target structure’s roof, and a
level of confidence in the estimate, using non-target structure information is
a mental process and, therefore, an abstract idea. See 84 Fed. Reg. at 52;
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014) (concluding “taking existing information . . . and organizing
this information into a new form” is an abstract idea); SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (concluding claims
were directed to the abstract idea of “selecting certain information, analyzing
it using mathematical techniques, and reporting or displaying the results of
the analysis”); see also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1353–54 (Fed. Cir. 2016) (concluding that “analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category” and concluding claims directed to “collecting information,
analyzing it, and displaying certain results of the collection and analysis”
were abstract); Intellectual Ventures I LLC v. Capital One Fin. Corp., 850
F.3d 1332, 1340 (Fed. Cir. 2017) (concluding claims that focused on
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collecting, displaying and manipulating data were directed to an abstract
idea).
Because the claim recites a judicial exception, we next determine
whether the claim integrates the judicial exception into a practical
application. 84 Fed. Reg. at 54. To determine whether the judicial exception
is integrated into a practical application, we identify whether there are “any
additional elements recited in the claim beyond the judicial exception(s)”
and evaluate those elements to determine whether they integrate the judicial
exception into a recognized practical application. 84 Fed. Reg. at 54–55
(emphasis added); see also Manual of Patent Examining Procedure
(“MPEP”) §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018).
Appellant argues the “claims are directed to specific mathematical
rules for estimating the roof age and do not encompass well-known, routine,
or conventional features.” Br. 9. In particular, Appellant argues the claims
are not directed to an abstract idea because the claims “concern a target
structure (e.g., real property) and relate particularly to the roof of that
structure” and “involve calculation steps which together define a particular
way of estimating the roof age.” Br. 9–10. Appellant asserts the claims
differentiate over prior solutions because the claims have specific
mathematical solutions to estimate a roof age using information about
structures other than the target structure and without physically inspecting
the target structure’s roof. Br. 12–17 (describing the particular analyses and
calculations for estimating roof age of a target structure based on
information about non-target structures recited in independent claims 21 and
28–30, including: using an average roof age in an area, as recited in claim
21; using (and converting to standardized format) year built and roof
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replacement information, as recited in claim 29; using year built and roof
replacement information to calculate a weighted area average roof age and
additionally providing a confidence score, as recited in claim 28; and using a
weighted area average roof age based on year built and roof age information
in a target area, as recited in claim 30). Appellant also contends the claims
provide an improvement to actuarial sciences. Br. 18–19.
To the extent Appellant’s arguments assert the claims are not directed
to an abstract idea because the claims (1) recite a particular method of
calculating a roof age, (2) relate to real property, or (3) represent an
improvement to actuarial sciences (by not requiring a physical inspection or
inspection of the target property’s information), see Br. 9–18, we disagree.
The particular method used and using data not previously used in the field
(i.e., non-target structure data) are aspects of the recited mental processes
that make up the abstract idea and, therefore, cannot integrate the abstract
idea (i.e., itself) into a practical application. When evaluating integration
into a practical application, we look to the elements recited in addition to the
abstract idea to see if these additional elements integrate the abstract idea
into a practical application. 84 Fed. Reg. at 54–55.
Additionally, the fact that the information collected relates to a
physical structure is not relevant to the question of whether Appellant’s
claims are directed to an abstract idea because the claims are not directed to
the physical structure. Moreover, whether something claimed is physical is
not the test for determining whether claimed subject matter is judicially-
excepted from patent-eligibility. Were that the case, which it is not, claims to
computers necessarily would be patent eligible. See Alice, 573 U.S. at 224
(explaining that a computer’s existence in the physical rather than
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conceptual realm is not relevant to the analysis); Solutran, Inc. v. Elavon,
Inc., 931 F.3d 1161, 1168 (Fed. Cir. 2019) (“The physical nature of
processing paper checks in this case does not require a different result,
where the claims simply recite conventional actions in a generic way (e.g.,
capture data for a file, scan check, move check to a second location, such as
a back room) and do not purport to improve any underlying technology.”).
Therefore, we look to the additional elements to see if these elements,
alone or in combination, integrate the abstract idea into a practical
application. The additional elements recited in the claims include (1) the
“computer processor” that performs certain recited steps, (2) the fact that the
methods are “computer-implemented,” and (3) the fact that (i) the
documentation from which claim 21 extracts a year in which a roof
replacement was performed and (ii) the data received in claims 28 through
30 is provided in computer-readable format and stored in a non-transitory
computer-readable medium. For purposes of this Decision, although we
determine the returning the estimate steps and the extracting or receiving
data steps are merely mental processes and part of the abstract idea, we
alternatively analyze these steps an additional element.
Here, we find the additional limitations do not integrate the judicial
exception into a practical application. More particularly, the claims do not
recite: (i) an improvement to the functionality of a computer or other
technology or technical field (see MPEP § 2106.05(a)); (ii) using a
“particular machine” to apply or use the judicial exception (see MPEP
§ 2106.05(b)); (iii) a particular transformation of an article to a different
thing or state (see MPEP § 2106.05(c)); or (iv) any other meaningful
limitation (see MPEP § 2106.05(e)). See also 84 Fed. Reg. at 55. Rather, the
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additional elements simply (1) use computers as tools to implement the
abstract idea requiring no more than generic computer elements to perform
generic computer functions or (2) add insignificant extra-solution activity.
The recited “computer processor” is a generic computer element
recited at an extremely high level of generality. See, e.g., Spec. ¶¶ 101–106.
The receiving data and extracting information steps, the returning the
estimate steps, and the fact that the methods are “computer-implemented”
and receive or extract information from data/documentation in “computer-
readable form” stored in “non-transitory computer readable media” are the
most fundamental, generic, and basic purpose of computers to receive,
process, transmit, and display information. Spec. ¶¶ 96–106; See Alice, 573
U.S. at 226 (“Nearly every computer will include a [computer components]
. . . capable of performing the basic calculation, storage, and transmission
functions required by the method claims.”); see also Solutran, 931 F.3d at
1169 (“Merely using a general-purpose computer and scanner to perform
conventional activities in the way they always have, as the claims do here,
does not amount to an inventive concept.”). Accordingly, these steps simply
recite the use of generic computer components as tools to implement the
abstract idea. See 84 Fed. Reg. at 55; MPEP § 2106.05(f).
Moreover, although the receiving data and extracting information
steps are part of the abstract idea because they are merely observations (i.e.,
mental processes), to the extent these steps could be considered additional
elements beyond the abstract idea, they are merely pre-solution data
gathering steps required to obtain the data necessary to perform the recited
estimations. Furthermore, to the extent returning the estimated roof age is a
step beyond the abstract idea, displaying or transmitting the results of the
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estimation is merely post-solution activity to output the results of the mental
steps. These steps recite the type of insignificant extra-solution activity the
courts have determined insufficient to transform judicially excepted subject
matter into a patent-eligible application. See 84 Fed. Reg. at 55, 55 n.31;
MPEP § 2106.05(g); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can.,
771 F.Supp.2d 1054, 1065 (E.D. Mo. 2011) aff'd, 687 F.3d 1266 (Fed. Cir.
2012) (explaining that “providing data . . . [is] insignificant post solution
activity”); Bilski v. Kappos, 561 U.S. 593, 612 (holding the use of well-
known techniques to establish inputs to the abstract idea as extra-solution
activity that fails to make the underlying concept patent eligible); see also
Parker v. Flook, 437 U.S. 584, 590 (1978) (explaining “[t]he notion that
post-solution activity, no matter how conventional or obvious in itself, can
transform an unpatentable principle into a patentable process exalts form
over substance”); Elec. Power, 830 F.3d at 1354 (recognizing “that merely
presenting the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and
analysis”).
We agree with the Examiner that the combination of the additional
computer components merely applies the abstract idea on generic computing
components without improving the underlying computer or technology or
imposing any other meaningful limits on the abstract idea, adding only, at
most, insignificant pre-solution data gathering and post-solution data
presentation. See MPEP § 2106.05(a), (e)–(g); see also Mortg. Grader, Inc.
v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016)
(noting that components such as an “interface,” “network,” and “database”
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are generic computer components that do not satisfy the inventive concept
requirement); buySAFE, 765 F.3d at 1355 (“That a computer receives and
sends the information over a network—with no further specification—is not
even arguably inventive.”). That is, the claims invoke computers merely as a
tool to implement the abstract idea for obtaining and analyzing information
in a particular way. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281,
1286 (Fed. Cir. 2018); 84 Fed. Reg. at 55; MPEP § 2106.05(f).
Appellant argues the claims “amount to more than merely automating
conventional methods” because the claims “provide specific rule-base
methods for determining the physical condition of a target structure” and
“allow for accurate and reliable estimates of roof age without the need for an
in-person evaluation.” Br. 17–18 (citing McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). This argument is also
unpersuasive.
Even accepting Appellant’s argument that prior solutions did not
estimate roof age using the particular method and data recited in the claims,
this does not change the character of the claims. Simply using a generic
computer to automate a process does not confer eligibility onto an otherwise
abstract idea because it does not improve a computer or technology, but
rather improves the process itself. See Gottschalk v. Benson, 409 U.S. 63, 67
(1972) (explaining that the claimed steps could easily “be carried out in
existing computers long in use, no new machinery being necessary”); see
also Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) (“[O]ur precedent is clear that merely adding
computer functionality to increase the speed or efficiency of the process
does not confer patent eligibility on an otherwise abstract idea.”).
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The claims in McRO were held eligible because the solution focused
upon improvements over existing, manual 3-D animation techniques. See
McRO, 837 F.3d at 1314 (“The computer here is employed to perform a
distinct process to automate a task previously performed by humans.”). The
claims in McRO did not automate the mental steps animators previously
used, but instead claimed an improved animation method that allowed a
computer to perform a task it could not previously perform. The court
determined this technological solution to a technological problem was
sufficient for eligibility. See McRO, 837 F.3d at 1314 (“It is the
incorporation of the claimed rules, not the use of the computer, that
‘improved [the] existing technological process’ by allowing the automation
of further tasks.”), 1316 (“When looked at as a whole, claim 1 is directed to
a patentable, technological improvement over the existing, manual 3–D
animation techniques. The claim uses the limited rules in a process
specifically designed to achieve an improved technological result in
conventional industry practice.”). On the other hand, Appellant’s claims
merely implement a data-based solution to a business problem using generic
computers as tools instead.
Thus, we agree with the Examiner that Appellant’s claims are directed
to the abstract idea of estimating the age of a target structure’s roof, and a
level of confidence in the estimate, using non-target structure information.
The recited steps of this process involve only mental processes, which the
Guidance identifies as a category of abstract idea. See 84 Fed. Reg. at 55.
The additionally recited elements are generic computer components recited
at a high level of generality and insignificant extra-solution activity, which
fail to integrate the abstract idea into a practical application.
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Because we determine the claims are directed to an abstract idea, we
analyze the claims under step two of Alice to determine whether there are
additional limitations that individually, or as an ordered combination, ensure
the claims amount to “significantly more” than the abstract idea. Alice, 573
U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72–73, 77–79 (2012)). As stated in the Guidance, many of the
considerations to determine whether the claims amount to “significantly
more” under step two of the Alice framework are already considered as part
of determining whether the judicial exception has been integrated into a
practical application. 84 Fed. Reg. at 56. 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 appends well-understood, routine, conventional activities at
a high level of generality. 84 Fed. Reg. at 56.
Appellant’s claims do not recite specific additional limitations (or a
combination of limitations) that are more than well-understood, routine, and
conventional, and Appellant has not pointed to anything that would raise a
genuine issue of material fact that the generically recited components or the
sending and returning steps constitute limitations beyond what was well-
understood, routine, and conventional. For example, as discussed above, the
generic computer functions of sending requests and returning data do not
amount to “significantly more” than the judicial exception. See buySAFE,
765 F.3d at 1355 (“That a computer receives and sends the information over
a network—with no further specification—is not even arguably inventive.”);
Cf. Alice, 573 U.S. at 226 (“Nearly every computer will include a [computer
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components] . . . capable of performing the basic calculation, storage, and
transmission functions required by the method claims.”).
Similarly, the recited computer components (i.e., the computer
processor and the fact that the methods are “computer-implemented” and
receive or extract information from data/documentation in “computer-
readable form” stored in “non-transitory computer readable media”) as well
as the receiving data, extracting information, and returning the estimate steps
are generically recited at a high level of generality performing generic
computing functions. Thus, the recited computer components are well-
understood, routine, and conventional components performing well-
understood, routine, and conventional activities. See Alice, 573 U.S. at 226.
Considered both individually and together, the claimed limitations do
not add significantly more to the abstract idea and, therefore, do not render
the subject matter patent eligible.
Appellant also argues the claims “do not pre-empt others from using
. . . conventional methods” that rely on features of the target property itself.”
Br. 19. The Examiner notes that “the absence of complete preemption does
not guarantee that a claim is eligible” and preemption concerns are
addressed by the two-part Alice test. Ans. 6–7.
“‘[W]hile preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.’”
FairWarning IP, 839 F.3d at 1098 (quoting Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)); see also OIP Techs.,
Inc. v. Amazaon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015)
(“[T]hat the claims do not preempt all price optimization or may be limited
to price optimization in the e-commerce setting do not make them any less
Appeal 2018-007730
Application 15/198,429

18
abstract.”). Further, “[w]here a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot.” Ariosa,
788 F.3d at 1379.
SUMMARY
For the above reasons, Appellant has not persuaded us the Examiner
erred in rejecting claims 21–30 under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter.
CONCLUSION
In summary:
Claims
Rejected
Basis Affirmed Reversed
21–30 § 101 21–30

AFFIRMED