Ex Parte Den Herder et al

Patent Trial and Appeal Board

Jan 26, 2017

13346153 (P.T.A.B. Jan. 26, 2017)

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.
13/346,153 01/09/2012 Nathan Pieter Den Herder 880417-0118-US00 7946
134795 7590 01/30/2017
MICHAEL BEST & FRIEDRICH LLP (DC)
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
WEISENFELD, ARYAN E
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
01/30/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
DCipdocket @ michaelbest. com
sbj ames @michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATHAN PIETER DEN HERDER, HAMILTON FOUT,
STEVEN PIERCE, ERIC ROSENBLATT, and
JOHN TREADWELL
Appeal 2015-000580
Application 13/346,153
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1—6, 10-15, and 19-24. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b). Appellants appeared for an oral
hearing on January 10, 2017.
We AFFIRM.
Appeal 2015-000580
Application 13/346,153
BACKGROUND
Appellants’ invention is directed to a property appraisal evaluation
using traffic data (Spec. 1).
Claim 1 is illustrative:
1. A method for evaluating comparable properties in an
automated valuation model, the method comprising:
accessing, by a processing unit, property data
corresponding to a geographical area;
determining subset geographical areas within the
geographical area;
performing, by the processing unit, a regression based upon the
property data, the regression modeling the relationship between
price and explanatory variables, the explanatory variables
including a set of one or more traffic variables, the traffic
variables including a marketability variable, wherein a value for
the marketability variable is associated to properties located
within each of the subset geographical areas, the marketability
variable being an average commute time respectively assigned
to each of the subset geographical areas;
identifying a subject property; and
evaluating, by the processing unit, comparable properties
corresponding to the subject property based upon results of the
regression.
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Impact of Highways on Property Values: Case Study of the Superstition
Freeway Corridor, Az. Transp. Research Ctr. (2001) (hereinafter
“US60”).
Sennott
Stinson
US 2004/0019517 A1 Jan. 29, 2004
US 2012/0005109 A1 Jan. 5, 2012
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Application 13/346,153
Dana George, What Affects the Appraisal Value of a House? (hereinafter
“CommuteTime”), http://web.archive.org/web/20101113203827/
http://homeguides. sfgate.com/affects-appraisal-value-house-121 l.html (last
visited Feb. 5, 2013).
Willaim T. Hughes & C. F. Sirmans, Adjusting House Prices for Intra-
Neighborhood Traffic Differences, Appraisal J. (1993) (hereinafter
“Traffic”), http://www.highbeam.com/doc/1 Gl-14522638.html# (last
visited Feb. 5, 2013).
J. Archer et al., The Impact of Lowered Speed Limits in Urban and
Metropolitan Areas (hereinafter “SpeedLimif’), https://mail-attachment.
googleusercontent.com/... sadet=1360602299823&sads=zxzl C-
PUkoKPCVVL8LnZSF2qFW_o&sadssc=l (last visited Feb. 11,2013).
Appellants appeal the following rejections:
Claims 1—6, 10-15, and 19-24 under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
Claims 1, 2, 10, 11, 19, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Stinson, Sennott, US60, and CommuteTime.
Claims 3, 12, and 21 under 35 U.S.C. § 103(a) as unpatentable over
Stinson, Sennott, US60, CommuteTime, and Traffic.
Claims 4, 5, 13, 14, 22, and 23 under 35 U.S.C. § 103(a) as
unpatentable over Stinson, Sennott, US60, CommuteTime, Traffic, and
Official Notice.
Claims 6, 15, and 24 under 35 U.S.C. § 103(a) as unpatentable over
Stinson, Sennott, US60, CommuteTime, Traffic, and SpeedLimit.
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Application 13/346,153
ISSUES
Did the Examiner err in rejecting the claims under 35U.S.C. § 101
because the claims are not directed to an abstract idea?
Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 103(a)
because Stinson does not teach a regression analysis that models the
relationship between price and traffic variables that includes a marketability
variable and does not relate to a subset of geographical area?
Did the Examiner err in rejecting claim 1 under 35 U.S.C. § 103(a)
because Sennott does not include a traffic variable in the valuation?
PRINCIPLES OF LAW
Burden of the Examiner
The prima facie case is merely a procedural device that enables an
appropriate shift of the burden of production. In re Jung, 637 F.3d 1356,
1362 (Fed. Cir. 2011); Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir.2007)
(citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)); see also In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The Patent and Trademark
Office (“PTO”) satisfies its initial burden of production by “adequately
explaining] the shortcomings it perceives so that the applicant is properly
notified and able to respond.” Hyatt, 492 F.3d at 1370. In other words, the
PTO carries its procedural burden of establishing a prima facie case when its
rejection satisfies 35 U.S.C. § 132, in “notifying] the applicant. . . [by]
stating the reasons for [its] rejection, or objection or requirement, together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.” 35 U.S.C.
§132. That section “is violated when a rejection is so uninformative that it
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Application 13/346,153
for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir.1990).
35 U.S.C. § 132 ensures that an applicant is informed of the broad
statutory basis for the rejection of his claims, so that he may determine what
the issues are on which he can or should produce evidence. Chester, 906
F.2d at 1578.
[A] 11 that is required of the office to meet its prima facie burden
of production is to set forth the statutory basis of the rejection
and the reference or references relied upon in a sufficiently
articulate and informative manner as to meet the notice
requirement of § 132. As the statute itself instructs, the
examiner must “notify the applicant,” “stating the reasons for
such rejection,” “together with such information and references
as may be useful in judging the propriety of continuing
prosecution of his application.” 35 U.S.C. § 132.
In re Jung, 637 F.3d at 1363.
It is well-established that the Board is free to affirm an examiner’s
rejection so long as “appellants have had [a] fair opportunity to react to the
thrust of the rejection.” In re Kronig, 539 F.2d 1300, 1302—03 (CCPA
1976); In re Jung, 637 F.3d at 1365.
Rejections under 35 U.S.C. § 101
natural phenomena, and abstract ideas-—or add too little to such
underlying ineligible subject matter—from those that claim patent-
eligible applications of those concepts. First, given the nature of the
invention in this case, we determine whether the claims at issue are
directed to a patent-ineligible abstract idea. Alice Corp. v. CLS Bank
Court set forth an analytical framework under
-'♦i
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Int7, 134 S. Ct. 2347, 2355, 189 L.Ed.2d 296 (2014). If so, we then
consider the elements of each claim—both individually and as an
ordered combination—to determine whether the additional elements
transform the nature of the claim into a patent-eligible application of
that abstract idea. Id. This second step is the search for an “inventive
concept,” or some element or combination of elements sufficient to
ensure that the claim in practice amounts to “significantly more” than
a patent on an ineligible concept. Id.
FACTUAL FINDINGS
We adopt the Examiner’s findings as our own (Final Act. 3—7).
Additional findings of fact may appear in the Analysis that follows.
ANALYSIS
Rejection under 35 U.S.C. §101
We are not persuaded of error on the part of the Examiner by the
Appellants’ argument that the claims are not directed to an abstract idea.
The Examiner found that the claims were directed to the abstract idea
of property valuation (Ans. 5). The Appellants argue that the claims are
directed to a much more specific subject matter. In the Appellants’ view, the
claims are directed to evaluating comparable properties in an automated
valuation model by using a regression of property data that includes a traffic
variable (Reply Br. 7).
We agree with the Examiner that the claims are directed to an abstract
idea of property valuation because property valuation is a fundamental
economic practice. See Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
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1306, 1333—34 (Fed. Cir. 2015) (reviewing cases and holding a computer-
implemented method of determining a price to be abstract). Even if we
accept the Appellants’ argument that the claims are directed to more than
just property valuation, the use of a mathematical model to value property is
also a fundamental economic practice. In addition, the use of regression
modeling to do the calculation is a use of a mathematical algorithm which is
also an abstract idea. Data analysis and algorithms are abstract ideas. See,
e.g., Alice 134 S. Ct. at 2355; Bilski v. Kappos, 561 U.S. 593, 611 (2010);
Parker v. Flook, 437 U.S. 584, 594—95 (1978); Gottschalk v. Benson, 409
U.S. 63, 71—72 (1972). Put concisely, “[wjithout additional limitations, a
process that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible.”
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014).
The Appellants also argue that in accordance with the second prong,
the Examiner erred because the claims are more than data entering, data
comparing, data outputting, and data displaying (Reply Br. 9-11). The
Appellants direct our attention to the recitation of determining subset
geographical areas and performing the regression modeling {id. at 9). As we
discussed above, the performance of the regression modeling relates to
calculations using an algorithm and is itself an abstract idea and therefore
not substantially more than an abstract idea. With regard to the step of
determining a subset geographical area, it is not clear how this step
transforms the nature of the claim into a patent-eligible application of that
abstract idea. Rather, this determining step is merely data analysis and
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certainly does not improve computer functioning or “effect an improvement
in any other technology or technical field.” Alice, 134 S. Ct. at 2359.
We are not persuaded of error on the part of the Examiner by the
Appellants’ argument that the claims pose no risk of pre-empting the use of
a concept across all fields of innovation (Reply Br. 4—5).
The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability.
Alice, 134 S. Ct. at 2354. For 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).
Preemption concerns are, thus, fully addressed and rendered moot
where a claim is determined to disclose patent ineligible subject
matter under the two-part framework described in Mayo and Alice.
Although “preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent
eligibility.” Id.
We are not persuaded of error by the Examiner by the Appellants’
arguments that the Examiner’s rejection relies upon overgeneralization of
the subject matter of the claims (Reply Br. 6, 7—8). The Appellants argue
that the Examiner must do more than assert that the claims are directed to
the general technical field of the application to set forth a proper rejection
under 35 U.S.C. § 101 {id. at 8). However, as explained above, as long as
the Examiner’s rejection notifies the Appellants of the reasons for such
rejection together with such information and references as may be useful in
judging the propriety of continuing prosecution of the application, a prima
facie case is established. In the instant case, w^e determine that the Examiner
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has notified the Appellants, stating the reasons for the rejection together with
such information as may be useful in j udging the propriety of continuing
prosecution of the application. 35 U.S.C. § 132.
In view of the foregoing, we will sustain the Examiner’s rejection of
claims 1—6, 10-15, and 19-24.
Rejections under 35 U.S.C. §103
Claims 1, 2, 10, 11, 19, and 20
We are not persuaded of error on the part of the Examiner by the
Appellants’ argument that Stinson does not teach regression correlating price
to particular explanatory variables such as traffic (Appeal Br. 17—18). We
note at the outset that nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). In this instant case, the Examiner relies on Sennott for teaching
traffic variables associated to properties located within each of the subset
geographical areas (Final Act. 5). In regard to Stinson teaching a regression
modeling correlating price to other variables, we agree with the Examiner
that as paragraph 59 discloses that various characteristics or variables affect
a property’s market price and as paragraph 62 discloses that the market price
analysis can be performed using regression to reconcile an adjustment to a
first valuation of a property based on isolated variables, Stinson teaches this
subject matter. In addition, although the adjustment is made after a first
property valuation, this adjustment is itself a property valuation. We note
that the claims are not limited to just one property valuation.
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We are not persuaded of error on the part of the Examiner by the
Appellants’ argument that Stinson’s regression does not relate to a subset of
a geographic area and does not include breaking a geographical area into
multiple distinct subsets of geographical areas (Appeal Br. 19-20). We
agree with the Examiner that Stinson teaches this subject matter at
paragraph 16 by teaching that the appraisal system can be directed to a
specific neighborhood, city, or zip code (Final Act. 3). We agree that a
larger area such as a county or state is broken up in order to do the analysis
on just a neighborhood, city, or zip code.
We are not persuaded of error on the part of the Examiner by the
Appellants’ argument that Sennott does not teach that a valuation includes
consideration of traffic variables because the traffic variables in Sennott are
not considered until a field inspection which takes place after the valuation
(Appeal Br. 21). As we stated above, the claims are not limited to just one
valuation. In our view, even though a valuation is done prior to the field
inspection, the valuation that includes the field inspection is a valuation as
well. We note also, the Examiner relies on Sennott for teaching that traffic
is one of the variables that can be considered to value property. As such,
even if the consideration of traffic did not take place during a valuation of
the property in Sennot, Sennott would nonetheless suggest to a person of
ordinary skill in the art to use traffic as one of the variables in the regression
model of Stinson.
We are not persuaded of error on the part of the Examiner by the
Appellants’ argument that there is no disclosure of the average commute
time in CommuteTime.
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We find that CommuteTime discloses that proximity to major
highways plays a role in determining property value as most people would
like to cut down on their commute time.
We agree with the Examiner that as CommuteTime teaches that a
property’s proximity to a highway affects one’s commute time,
CommuteTime suggests that average commute time may be used as a
variable in making a property valuation to the same extent as is taught in
Appellants’ Specification (Final Act. 7).
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 1.
We will also sustain the rejection as it is directed to claims 10 and 19
because, although the Appellants state that claim 10 does not stand or fall
with claim 1, the Appellants do not explain why claim 10 should be
considered separately by specifically pointing out how claim 10 contains
patentable subject matter separate from claim 1 (Appeal Br. 26).
We will sustain the Examiner’s rejection of claims 2, 11, and 20 for
the reasons given above in our discussion of the rejection of claim 1.
Claims 3, 12, and 21
We are not persuaded of error on the part of the Examiner by the
Appellants’ argument that Traffic does not disclose whether the traffic
feature is overlapped with the parcel of the candidate property and that no
comparison is disclosed in the reference (Appeal Br. 30-31). We agree with
the Examiner that the disclosure in Traffic at paragraphs 1 and 2 on page 3
that a negative effect on the value of a house is high traffic areas (areas that
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overlap with the traffic feature) compared to houses in low traffic areas is a
teaching of this subject matter as broadly claimed.
In view of the foregoing, we will sustain the rejection of claim 3. We
will also sustain the rejection of claims 12 and 21 because the Appellants
have not argued the separate patentability of these claims.
Claims 4, 5, 13, 14, 22, and 23
We will sustain the rejection of claims 4, 13, and 22. We are not
persuaded of error on the part of the Examiner by the Appellants’ argument
in regard to claims 4, 13, and 22 that there is no discussion in Official Notice
of examining the line between a candidate comparable property and a traffic
feature because the Examiner does not take Official Notice of examining a
line as argued by Appellants (Appeal Br. 32). The Official Notice taken by
the Examiner is that it is old and well known to measure the distance
between two objects by measuring a line (Final Act. 12). The Examiner
reasons that since US60 determines the effect of noise from a major highway
on the value of a home, measuring the distance to the highway is most
accurately done using a line (id. at 12—13).
We will not sustain the Examiner’s rejection of claims 5, 14, and 23
because we agree with the Appellants that Traffic does not disclose
determining whether an intervening non-excluded parcel is present along the
line between the traffic feature and the parcel of the candidate comparable
property (Appeal Br. 32—33). Although it is true that Traffic discloses
determining property values adjacent a freeway, this adjacent property is not
disclosed to be between the traffic feature and the parcel of the candidate
comparable property.
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Claims 6, 15, and 24
We will sustain the rejection of claims 6, 15, and 24 because we agree
with the Examiner that a person of ordinary skill in the art would have found
the teaching in Traffic that the value of property is affected by the noise in
the area and the teaching in SpeedLimit that reduced noise affects the value
of property to suggest that variable of speed limits be included in valuing
property.
DECISION
We affirm the Examiner’s § 101 rejection.
We affirm the Examiner’s § 103 rejections of claims 1—4, 10—13, 15,
19-22, and 24.
We do not affirm the Examiner’s § 103 rejections of claims 5, 14, and
23.
TIME PERIOD
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) (2009).
ORDER
AFFIRMED
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