Ex Parte Bateman et al

Patent Trials and Appeals Board

Oct 31, 2018

14984444 - (D) (P.T.A.B. Oct. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/984,444 12/30/2015
909 7590 11/02/2018
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
FIRST NAMED INVENTOR
David T. Bateman
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
034428-0444744 1087
EXAMINER
HE,JIALONG
ART UNIT PAPER NUMBER
2659
NOTIFICATION DATE DELIVERY MODE
11/02/2018 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):
docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID T. BATEMAN, AARON PHILLIPS,
ANDREW E. PLAGENS, J. CHARLES DRENNAN, and
WENDELL H. LANGDON 1
Appeal2018-004854
Application 14/984,444
Technology Center 2600
Before ERIC B. CHEN, MICHAEL M. BARRY, and JOHN R. KENNY,
Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-26, which constitute all pending claims. Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify TitleFlow LLC as the real party in interest. App. Br. 2.
Appeal2018-004854
Application 14/984,444
SPECIFICATION
The Specification describes systems and methods for managing real
property rights. Spec. ,r 2. The disclosed systems and methods involve
scanned optical-characterized recognized documents, ownership flows,
ownership graphs, and ownership graph validity rules. Id. ,r,r 34, 35, 49, 98.
CLAIMED INVENTION
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of processing conveyance records obtained
from repositories of unstructured data in county land offices, the
method comprising:
obtaining and storing, with one or more
processors, more than a thousand scanned documents,
each having text describing one or more conveyances of
interest in real property;
obtaining and storing, with one or more
processors, an ownership flow of an interest in real
property described by at least some of the documents, the
ownership flow including a plurality of conveyances in a
conveyance graph;
receiving, from a client computing device, with
one or more processors, a request to view the ownership
flow, the request identifying the interest in real property;
applying, with one or more processors, ownership
graph rules to the ownership flow to identify
conveyances in the ownership flow that violate one or
more of the rules;
sending, to the client computing device, with one
or more processors, instructions to display the ownership
flow with an indication of a conveyance violating one or
more of the rules;
receiving, from the client device, with one or more
processors, a command to edit the ownership flow to
comply with the violated rule;
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in response to the command, with one or more
processors, storing an updated ownership flow reflecting
the edit;
after storing the updated ownership flow,
receiving, with one or more processors, another request
to view the ownership flow; and
sending, with one or more processors, instructions
to display the updated ownership flow reflecting the edit.
REJECTION
Claims 1-26 stand rejected under 35 U.S.C. § 101. Final Act. 7-9.
These claims were also subject to prior art rejections in the Final Office
Action, but those prior art rejections were withdrawn in the Answer. Final
Act. 9-19; Ans. 3. 2
ANALYSIS
In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014), the Supreme Court reiterates an analytical two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 79 (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, 134 S. Ct. at
2355. The first step in the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," such as an
abstract idea. Id. If the claims are directed to eligible subject matter, the
2 The Answer does not expressly, but does implicitly, withdraw the prior art
rejection of claims 21-26 (see Ans. 3) because the Answer does not address
any of Applicants' arguments regarding the purported patentability of claims
21-26 over the prior art. Id. at 3-16.
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inquiry ends. Thales Visionix Inc. v. U.S., 850 F.3d 1343, 1346 (Fed. Cir.
2017); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir.
2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "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." Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 79, 78). In
other words, the second step is to "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. (citing Mayo, 566 U.S. at 72-73).
In rejecting claims 1-26 under 35 U.S.C. § 101, the Examiner
determines these claims are directed to the abstract ideas of (i) collecting and
analyzing information to detect misuse and notifying a user when misuse is
detected; (ii) collecting and comparing known information; (iii) collecting,
displaying, and manipulating data; (iv) collecting information, analyzing it,
and displaying certain results of the collection and analysis; (v) organizing
and manipulating information through mathematical correlations; and ( vi)
processing conveyance records, which the Examiner determines is a
fundamental economic practice, analogous to creating a contractual
relationship. Final Act. 4; Ans. 5. The Examiner analogizes limitations in
claims 1-26 to limitations addressed in Fair Warning IP, LLC v. Iatric
Systems, Inc., 839 F.3d 1089 (Fed. Cir. 2016); Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016); and buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350 (Fed. Cir. 2014). Ans. 5. The Examiner finds that claim
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1, for example, would encompass the every-day activities of a county staff
member reviewing county real estate transactions. Ans. 6-9.
The Examiner further determines that the additional elements recited
by claim 1 add nothing more to the claimed invention than components that
perform basic routine functions provided by a general purpose computer
and, therefore, do not provide an inventive concept sufficient to render the
claims patent eligible. Final Act. 4.
Claim 1
Alice Step One
Turning to the first step of the Alice inquiry, Appellants argue that the
Examiner improperly overgeneralizes or simplifies claim 1 by failing to
account for the following recited steps:
receiving, from a client computing device, with one or
more processors, a request to view the ownership flow, the
request identifying the interest in real property;
applying, with one or more processors, ownership graph
rules to the ownership flow to identify conveyances in the
ownership flow that violate one or more of the rules; and
sending, to the client computing device, with one or more
processors, instructions to display the ownership flow with an
indication of a conveyance violating one or more of the rules.
App. Br. 6.
Appellants argue these recited steps are not inherent features of using
a computer to perform the allegedly abstract idea/ideas. App. Br. 6.
Instead, Appellants assert that these steps are part of a solution to a problem
with traditional computer systems. Id. Appellants argue claim 1 uses
limited rules in a process designed to achieve a technological result by
reciting "applying, with one or more processors, ownership graph rules to
the ownership flow to identify conveyances in the ownership flow that
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violate one or more of the rules." Id. at 9. Appellants assert that the recited
ownership graph rules are at least as specific as the rules recited in the
claims of McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299
(Fed. Cir. 2016) and, therefore, are not directed to an abstract idea. Id.;
Reply Br. 5. Appellants also argue that claim 1 recites specific operations
by which a specific data structure (a conveyance graph) is interrogated with
specific rules (graph conveyance rules) to produce a resulting user interface
by which human reviewers can quickly and efficiently understand and
improve complex title chains for various property interests. Reply Br. 7.
Appellants argue, therefore, claim 1 is similar to the claims addressed in
Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018), and,
thus, are not directed to an abstract idea. Id.
Appellants also argue that the Examiner's determination that claim 1
would encompass the every-day activities of a county staff member
reviewing county real estate transactions is both irrelevant and erroneous.
Reply Br. 3--4. Appellants argue that, even if claim 1 encompasses such
activities, claims that automate manual processes can be patent eligible. Id.
Further, Appellants argue that the every-day activities of a county staff
member would not satisfy claim 1 because the county staff member would
not programmatically process conveyances in a conveyance graph nor
generate a display for human review with "an indication of a conveyance
violating one or more of the rules." Id.
We disagree with Appellants' arguments regarding step one of the
Alice inquiry. First, Appellants' reliance on McRO is misplaced. The claims
in McRO recited a "specific ... improvement in computer animation" using
"unconventional rules that relate[ d] sub-sequences of phonemes, timings,
and morph weight sets." McRO, 837 F.3d at 1302---03, 1307---08, 1314--15.
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In McRO, the defendants conceded that, before the claimed invention, an
animator's process was driven by subjective determinations rather than
specific, limited mathematical rules. Id. at 1314. The claimed invention in
McRO "improv[ ed] the prior art through 'the use of rules, rather than artists,
to set the morph weights and transitions between phonemes."' Id. at 1313
( citation omitted). In contrast, the Examiner finds the ownership graph rules
recited by claim 1 encompass commonly accepted and widely followed
business rules and data integrity requirements. Ans. 12-13. For example,
the Specification discloses a 100 % ownership rule: i.e., flagging
conveyances in which the grantor did not own what was conveyed, or cases
where 100% ownership of a type of interest is not documented. App. Br. 2,
7-8; Spec. ,r,r 34, 96. The Examiner found the 100% rule is merely a
common business practice disclosed in the prior art reference RFFlow, and
the Examiner identified where in that reference the rule is disclosed. Ans.
13-14. Appellants do not rebut these findings. Reply Br. 5. Instead,
Appellants argue that regardless of whether the rules are commonly
followed, it is the specificity of the rules that provides patent eligibility. We
do not agree. For one, the recited rules are not specific. They are merely
termed ownership graph rules. In addition, the rules in McRO were
technological rules, not rules of business practice. Therefore, the specificity
of the rules in McRO resulted in the claims being directed to a patent eligible
technological invention, rather than an ineligible abstract idea. The rules
recited by claim 1 are directed to business practices, rather than
technological improvements, and, thus, do not avoid patent ineligibility.
Second, Appellants' reliance on Finjan is also misplaced. In Finjan,
the claims were directed to a non-abstract improvement in computer
functionality, rather than the abstract idea of computer security.
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The Finjan claims employed a new kind of file that enabled a computer
security system to do things it could not do before: tailoring access for
different users and identifying threats before a file reaches a user's
computer. Finjan, 879 F.3d at 1305. Here, the recited conveyance graph is
technologically a conventional graph and the rules recited by claim 1 are
directed to business practices.
Third, we agree with the Examiner that the claims are more analogous
to those in Fair Warning IP, LLC, 839 F.3d at 1097 ("The claims here do not
propose a solution or overcome a problem 'specifically arising in the realm
of computer [technology]."'), quoting DDR Holdings, LLC v. Hotels.com,
LP, 773 F.3d 1245, 1257 (Fed. Cir. 2014); Electric Power Group, 830 F.3d
at 13 54 ("the focus of the claims is not on such an improvement in
computers as tools, but on certain independently abstract ideas that use
computers as tools."); and buySAFE, Inc., 765 F.3d at 1354 ("the contractual
relations at issue constituted 'a fundamental economic practice long
prevalent in our system of commerce."'), quoting Bilski v. Kappas, 561 U.S.
593, 611 (2010). Accordingly, we determine claim 1 is directed to an
abstract idea.
Alice Step Two
Appellants argue that claim 1 sets forth an inventive concept because
none of the cited prior art teaches or suggests claim 1. App. Br. 11.
Appellants further assert that claim 1 is analogous to claims that the Federal
Circuit determined recited an inventive concept in Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016); and BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). Id. at
11-12.
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We disagree. First, whether the cited prior art teaches or suggests the
limitations of claim 1 is irrelevant for the patent eligibility inquiry. Mayo,
566 U.S. at 78, 88 (even a truly groundbreaking abstract idea, like Einstein's
theory of relativity, cannot make a claim patent-eligible); Affinity Labs of
Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016) (novelty
"does not avoid the problem of abstractness"); Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) ("a claim directed to a newly
discovered law of nature (or natural phenomenon or abstract idea) cannot
rely on the novelty of that discovery for the inventive concept necessary for
patent eligibility"); buySAFE, 765 F.3d at 1352 (abstract ideas are
unpatentable "no matter how '[g]roundbreaking, innovative, or even
brilliant"' they may be); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716
(Fed. Cir. 2014) (the fact that a method was "not previously employed in this
art is not enough-standing alone-to confer patent eligibility upon the
claims").
Second, Appellants' reliance on Enfzsh is misplaced. The Federal
Circuit did not determine that the claims in Enfzsh recited an inventive
concept. Instead, the Federal Circuit determined the patent eligibility of
those claims under Alice step one. Enfzsh, 822 F.3d at 1329.
Third, Appellants' reliance on BASCOM is misplaced. In BASCOM,
the Federal Circuit found an inventive concept because the patent at issue
claimed "a technology-based solution ... to filter content on the Internet that
overcomes existing problems with other Internet filtering systems."
BASCOM, 827 F.3d at 1351. Here, as the Examiner finds, and as Appellants
have not persuaded us otherwise, beyond abstract ideas, claim 1 recites
"generic computer functions that are well-understood, routine, and
conventional activities previously known to the industry. These computer
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components are recited at a high level of generality and add no more to the
claimed invention than the components that perform basic functions
routinely provided by a general purpose computers." Final Act. 5; App. Br.
10-12.
Accordingly, we sustain the rejection of claim 1.
Claims 2-9, 11-19, 21-24, and 26
Appellants do not separately argue claims 2-9, 11-19, 21-24, and 26.
App. Br. 4--13. Accordingly, we sustain the rejection of those claims.
Claims 10 and 20
For the first time, in the Reply Brief, Appellants separately argue
claims 10 and 20, contending that the following recitation renders these
claims patent eligible: "sending identifiers of the other ownership flows to
the client computing device comprises: sending links to images of
documents effecting corresponding transfers of ownership." Reply Br. 6.
Appellants argue that the post-Appeal Brief issuance of Core Wireless
Licensing S.A.R.L. v. LG Electronics, Inc, 880 F.3d 1356 (Fed. Cir. 2018)
provides good cause under 3 7 C.F .R. § 41.42(b )(2) for raising this issue in
the Reply Brief. Id. at 6. We are not persuaded. Appellants could have
separately argued claims 10 and 20 based on the cited limitation in the
Appeal Brief. Appellants cite nothing from Core Wireless that represented a
change in law or would have altered the viability of a separate patentability
argument such that they could have only presented the argument after Core
Wireless issued. Id. at 6. Further, by waiting until the Reply Brief to
separately argue claims 10 and 20, Appellants deprives us of the benefit of
the Examiner's position regarding the separate patentability of those claims.
Accordingly, under 37 C.F.R. § 4I.41(b)(2), we do not consider Appellants'
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separate patentability arguments for claims 10 and 20, and we sustain the
rejection of those claims.
Claim 25
Appellants argue claim 25 recites more specific rules than claim 1
and, therefore, claim 25 would be patent eligible even if claim 1 is not. App.
Br. 12-13; Reply Br. 5---6. We disagree. The Examiner found that the
additional recitations of claim 25 are directed to particular business practices
(Ans. 15-16), and Appellants have not persuaded ofus of any error in that
finding. Reply 5-6. More narrowly claiming ineligible subject matter does
not render a claim patent eligible. Mayo, 55 U.S. at 88-89. Accordingly,
we sustain the rejection of claim 25.
DECISION
We affirm the rejection of claims 1-26.
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)(l )(iv).
AFFIRMED
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