Ex Parte FawazDownload PDFPatent Trial and Appeal BoardSep 17, 201814703230 (P.T.A.B. Sep. 17, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/703,230 05/04/2015 24256 7590 09/17/2018 DINSMORE & SHOHL LLP 255 East Fifth Street, Suite 1900 CINCINNATI, OH 45202 FIRST NAMED INVENTOR Mazen N. Fawaz 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. MAZEN-004 1020 EXAMINER BORISSOV, IGOR N ART UNIT PAPER NUMBER 3649 MAIL DATE DELIVERY MODE 09/17/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD ExparteMAZENN. FAWAZ 1 Appeal2017-008901 Application 14/703,230 Technology Center 3600 Before STEFAN STAICOVICI, RICHARD H. MARSCHALL, and ANTHONY KNIGHT, Administrative Patent Judges. STAICOVICI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE- Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's decision in the Final Office Action ( dated April 20, 2016, hereinafter "Final Act.") rejecting claims 1-20. We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). SUMMARY OF DECISION We AFFIRM. 1 Appellant (Open House Realty, Inc.) is the applicant as provided in 37 C.F.R. § 1.46. Appeal2017-008901 Application 14/703,230 INVENTION Appellant's invention relates to "methods for ranking real estate agents." Spec. 1, 11. 10-11. Claim 1, 17, and 18 are independent. Claims 1 is illustrative of the claimed invention and reads as follows: 1. A method for providing a referral of a ranked real estate agent through a real estate agent referral system comprising the steps of: receiving search criteria with respect to the purchase or sale of a real estate property; receiving performance data for two or more real estate agents; calculating, by one or more computers, a performance matching value for each of the two or more real estate agents indicative of how well the performance data of each of the two or more real estate agents match the search criteria; refining, by the one or more computers, the performance data of the two or more real estate agents with the performance matching value to obtain a ranking of the two or more real estate agents for the real estate property; and generating a web based user portal displayed on a personal computer or a mobile device, the web based user portal allowing the user to view the agent search results, select a real estate agent from the agent search results, and transact business with the selected agent. 2 Appeal2017-008901 Application 14/703,230 REJECTIONS 2 I. The Examiner rejects claims 1-20 under 35 U.S.C. § 101 as being as directed to ineligible subject matter. II. The Examiner rejects claims 1-20 under 35 U.S.C. § I03(a) as being unpatentable over Sennott et al. (US 2008/0015879 Al, published Jan. 1 7, 2008, hereinafter "Sennott") and Foley et al. (US 2007/0116240 Al, published May 24, 2007). 3 ANALYSIS Rejection I Appellant has not presented arguments for the patentability of claims 1, 3, 4, 6-16, 19, and 20 apart from claim 1. See Br. 18-29. Therefore, in accordance with 37 C.F.R. § 4I.37(c)(l)(iv), we select claim 1 as the representative claim to decide the appeal, with claims 3, 4, 6-16, 19, and 20 standing or falling with claim 1. In view of Appellant's arguments, we will address the rejection of claims 2, 5, 17, and 18 separately. Section 101 of the Patent Act defines patent-eligible subject matter: "Whoever invents or discovers any new and useful process, machine, 2 The Examiner's rejections of claims 1-20 under the ground of non- statutory, obviousness-type double patenting over claims 1-26 of Fawaz '330 (US 8,332,330 B2, issued Dec. 11, 2012) and over claims 1-15 of Fawaz '443 (US 8,140,443 B2, issued Mar. 20, 2012) are moot in light of the Terminal Disclaimers filed by Appellant on Dec. 27, 2016. See Final Act. 3--4; Appeal Brief 11 (filed Nov. 21, 2016, hereinafter "Br."). 3 Although Foley is not mentioned in the heading of the rejection, it is part of the body of the rejection. We consider this omission a mere typographical error. 3 Appeal2017-008901 Application 14/703,230 manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. § 101. In interpreting this statutory provision, the Supreme Court has held that its broad language is subject to an implicit exception for "laws of nature, natural phenomena, and abstract ideas," which are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014). The Supreme Court has set forth "a framework 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 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). According to the Supreme Court's framework, we must first determine whether the claims at issue are directed to one of those concepts (i.e., laws of nature, natural phenomena, and abstract ideas). Id. If so, we must secondly "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." Id. (quoting Mayo, 566 U.S. at 79, 78). The Supreme Court characterizes the second step of the analysis as "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. (alteration in original) (quoting Mayo, 566 U.S. at 72-73). 4 Appeal2017-008901 Application 14/703,230 Step One The Examiner determines that the claimed method describes "the concept of ranking real estate agents based on performance data," which is "similar to the concepts involving human activity relating to commercial practices (e.g., hedging in Bilski) that have been found by the courts to be abstract ideas." Final Act. 4 (citing Bilski v. Kappas, 561 U.S. 593 (2010)). According to the Examiner, "[t]he recited method involves receiving first data, receiving second data, calculating third data reflecting matching the first and second data, modifying ( ranking) the second data based on the third data, and outputting said data." Id. at 4--5. Thus, the Examiner determines that the claimed method "is similar to the basic concept of manipulating information using mathematical relationships (e.g., converting numerical representation in Benson), which has been found by the courts to be an abstract idea." Id. at 5 (citing Gottschalkv. Benson, 409 U.S. 63 (1972)). The first prong of the test requires us to determine whether the challenged claims are directed to an abstract idea. To that end, Appellant argues that claim 1 passes step 1 of Alice because it is "directed to a computer implemented [ method]," and because "computer-implemented methods are directed to electronic search, such computer-implemented methods are inextricably tied to computer technology and distinct from the types of concepts typically found as abstract." Br. 12, 18. Thus, according to Appellant, the Examiner "fails to analyze claim 1 as a whole and as an ordered combination of elements," and, furthermore, "utilizes an impermissibly high level of abstraction that is untethered from the actual claim language." Id. at 19 (citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 5 Appeal2017-008901 Application 14/703,230 1327, 1337 (Fed. Cir. 2016), andMcRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016)). Moreover, Appellant contends: No consideration was given to the inventive steps of calculating a performance matching value of two or more real estate agents indicative of how well their performance data match search criteria of a web based user portal. No consideration was given to the inventive steps of then refining the performance data of the two or more real estate agents with the performance matching value to obtain a ranking of the two or more real estate agents for the real estate property. The ordered combination of features recited by claim 1 not only enables a user to perform an electronic search for a real estate property, but also visualize on a display the very best real estate agents for the particular property. Id. at 20. We do not find Appellant's arguments persuasive. The Examiner is correct in that claim 1 recites the abstract idea of ranking real estate agents based upon matching clients' search criteria with agents' performance (experience). Examiner's Answer 4 (dated Feb. 8, 2017, hereinafter "Ans."). We agree with the Examiner that the claimed method includes, inter alia, the steps of "receiving first data, receiving second data, calculating third data reflecting matching the first and second data, modifying (ranking) the second data based on the third data, and outputting said data." Id. At best, claim 1 provides a practical application for ranking real estate agents based on manipulating information (data) according to mathematical relationships (i.e., calculating "a performance matching value"). But a recitation of a practical application for an abstract idea is insufficient to transform an abstract idea into an inventive concept. Cf CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 6 Appeal2017-008901 Application 14/703,230 2011) ("The Court [Parker v. Flook, 437 U.S. 584 (1978)] rejected the notion that the recitation of a practical application for the calculation could alone make the invention patentable .... "). Moreover, we agree with the Examiner that ranking real estate agents based upon matching clients' search criteria with agents' performance (experience) by calculating a matching value "could be performed via pen and paper or in a person's mind." Ans. 6. We further agree with the Examiner that although the steps of "calculating," "refining," and "generating" narrow the abstract idea of claim 1, this does not mean that claim 1 is not an abstract idea because a specific abstract idea is still an abstract idea. See Ans. 5. Other cases have denied patentability of claims as being directed towards ineligible subject matter even though they described specific methods, such as, an I I -step method in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014), that described "using advertising as an exchange or currency." See Ans. 5. "[C]ases have not distinguished among different laws of nature according to whether or not the principles they embody are sufficiently narrow." Mayo, 566 U.S. at 88-89 ( citing Parker v. Flook, 437 U.S. 584 (holding narrow mathematical formula unpatentable)). Here, we agree with the Examiner that the recited "calculating" and "refining" steps are "nothing more than mere manipulation or reorganization of data" and the "generating" step, in light of Appellant's Specification, "is nothing more than displaying or outputting information such as contact information of the selected agents, storing agent search results, and allowing communication with the agents." Ans. 5. Moreover, we agree with the Examiner that the claimed method "could be performed via pen and paper or in a person's mind." Id. at 6. 7 Appeal2017-008901 Application 14/703,230 As to Appellant's pre-emption argument (see Br. 21-22 ), the Supreme Court has stated that "patents that ... integrate the building blocks [ of human ingenuity] into something more, thereby transform[ing] them into a patent-eligible invention ... pose no comparable risk of pre-emption, and therefore remain eligible for the monopoly granted under our patent laws." Alice, 134 S. Ct. at 2354--55 (second alteration in original) (citations and quotations omitted). Although a concern regarding preemption is one that "undergirds [the Supreme Court's] § 101 jurisprudence" overall (id. at 2358), it is not an issue addressed in the first step of the analysis. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014) ( discussing preemption in the context of the second step of the analysis). In other words, in the first step of the analysis, the issue is not whether the claims preempt all possible implementations of the identified abstract idea; rather, the issue is "the 'focus' of the claims, their 'character as a whole."' Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (quoting Eefzsh, 822 F.3d at 1335-36, and Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). In contrast, the second step, when reached, looks "more precisely at what the claim elements add." Id. Moreover, characterizing preemption as a driving concern for patent eligibility is not the same as characterizing preemption as the dispositive test for patent eligibility. Instead, "[t]he 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) 8 Appeal2017-008901 Application 14/703,230 (citing Alice, 134 S. Ct. at 2354). Although "preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Id. Thus, that claim 1 "require[s] ranking and displaying real estate agents in a specific way" (Br. 21 ), does not demonstrate error in the determination that claim 1 is directed to patent- ineligible subject matter. In conclusion, when read as a whole, independent claim 1 is directed to ranking real estate agents based on matching clients' search criteria with agents' performance (experience) (i.e., manipulating information using mathematical relationships), and, for the reasons discussed above, constitutes an abstract idea. The question to be settled next is whether claim 1 recites an element, or combination of elements, that is enough to ensure that the claim is directed to significantly more than an abstract idea. Step Two With respect to the second step of the Alice framework, the Examiner determines that the use of a computer "for conducting calculation and communicating or presenting data" is "known and conventional" because "[ t ]he ability to receive, compute, and send data is something that every off the shelf computer is configured to do." Final Act. 6-7. According to the Examiner, [T]he recited steps do not improve the functioning computers itself; there are no physical improvements in the claim, like a faster processor or more efficient memory, and there is no operational improvement, like mathematical computation that improve the functioning of the computer. [Appellant] did not invent a new type of computer. 9 Appeal2017-008901 Application 14/703,230 Id. at 7. Furthermore, the Examiner determines that the limitation of a "web based user portal," as called for by claim 1, "do[es] not add significantly more because [ it is] simply an attempt to limit the abstract idea to a particular technological environment, that is, implementation via computers." Id. at 8 (citing Bilski, 561 U.S. at 611). Citing to DDR Holdings, 773 F.3d at 1257, Appellant argues that "the features of claim 1 ... are 'necessarily rooted in computer technology' and, as a whole, represent significantly more than the identified abstract idea of ranking real estate agents." Br. 23. According to Appellant, the limitation of a "web based user portal," as called for by claim 1, "is necessarily rooted in computer technology at least because a computer and a connection to the Internet are required, and the claim is directed to the technical problem of electronic search and retrieval." Id. at 23-24 (emphasis omitted). Appellant explains that because "the ranking of real estate agents based on search criteria and performance data of real estate agents was not a previous business practice utilized by the real estate industry," "the arrangement of features recited by claim 1 add significantly more than the identified abstract idea of ranking real estate agents." Id. at 25 (citing Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016)). Furthermore, Appellant notes that "the mere fact that the claim[] do[ es] not improve the functioning of a computer or invent 'a new type of computer' does not mean that the claims are not patent-eligible under 35 U.S.C. § 101. Id. at 26 (citing DDR Holdings, McRO). We do not find Appellant's arguments persuasive. Claim 1 does not recite a computer, network (Internet), or display component that would make 10 Appeal2017-008901 Application 14/703,230 the function performed by these elements unconventional to remove the claim from the realm of an abstract idea. 4 The test is not whether the claimed computer, network, or display component can perform a "new" function, i.e., ranking real estate agents. It is whether the function allows the claimed computer, network, or display component to function better. Here, like in Alice, the generic claimed computer performs the task of ranking real estate agents more efficiently than a human; however, that does not make the invention patent-eligible. Likewise, the claimed "web based user portal" uses a network to connect to the Internet, i.e., web, and displays the ranked real estate agents. The Examiner is correct in that because the claimed "web based user portal" is "the only website where the user logs in to submit his/her search criteria and receive[] a list of recommended agents" and "no 'additional' or 'new' portal [is] generated at the end of the [claimed] method," the "web based user portal" constitutes conventional network and display components. Ans. 5. In other words, the computer, network (Internet), or display components function in a conventional manner to input data ("receiving" steps), to execute operations ("calculating" and "refining" steps), and to display data ("generating" step). See Alice, 134 S. Ct. at 2359--60 (holding patent-ineligible claims that "amount to 'nothing significantly more' than an instruction to apply the abstract idea ... using some unspecified, generic computer" and in which "each step does no more than require a generic 4 Although we appreciate that claim 1 does not explicitly recite a "network," nonetheless, because it recites a "web based user portal" claim 1 includes a network for connecting the claimed computer to the Internet, i.e., the "web." See Br. 51 (Claims App.) (emphasis added). 11 Appeal2017-008901 Application 14/703,230 computer to perform generic computer functions" (internal quotation marks, citation omitted)). The fact that these generic computer functions are applied to the particular environment of a computer-aided real estate agent ranking process is not sufficient to circumvent the prohibition against patenting an abstract idea. See Bilski, 561 U.S. at 610-11. Contrary to Appellant's arguments, claim 1 is not analogous to the claims recited in DDR Holdings, Enfzsh, McRO, and Bascom. See Br. 16- 19, 23-26. Unlike the situation in DDR Holdings, in which the problem of retaining website visitors was a challenge particular to the Internet (DDR Holdings, 773 F.3d at 1257), the problem of ranking real estate agents by matching real estate agents with clients' search criteria and agents' performance (experience) is not a challenge particular to a computer environment. See Ans. 12-13. Rather, "claim 1 uses a conventional, general purpose computer to perform generic computer functions, i.e., receiving and storing data, accessing memory, processing to transform some data, and outputting data." Id. at 13. Hence, claim 1 at most applies generic computer technology to the process of ranking real estate agents. In contrast with the claims in Enfzsh, which were directed to an improved computer database technique (see Enfzsh, 822 F.3d at 1338-1339), the focus of claim 1 "is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools." Elec. Power, 830 F.3d at 1354; see also Ans. 7. Appellant's claim 1 does not affect an improvement to computer functionality itself, but instead, focuses on the process (i.e., ranking real estate agents by matching clients' search criteria with agents' performance (experience)) that qualifies as an 12 Appeal2017-008901 Application 14/703,230 abstract idea, for which computer technology is invoked merely as a tool. As the Federal Circuit has made clear "the basic character of a process claim drawn to an abstract idea is not changed by claiming only its performance by computers, or by claiming the process embodied in program instructions on a computer readable medium." CyberSource, 654 F.3d at 1375 (citing In re Abele, 684 F.2d 902 (CCPA 1982)). Nor does claim 1 recite a specific technological improvement, such as the improvement over existing manual 3-D animation techniques recited by the claims in McRO or the filtering arrangement in Bascom. See McRO, 837 F.3d at 1313-16; Bascom, 827 F.3d at 1349; see also Ans. 15-16. Indeed, Appellant has not presented any persuasive evidence that the recited computer and display components provide a technological improvement over an existing computer and display component. Thus, we agree with the Examiner that the claimed "computing elements are recited at a high level of generality and perform the basic functions of a computer, such as performing a mathematical operation and receiving and outputting data, that would be needed to apply the abstract idea via [a] computer." Ans. 16. For the above reasons, the recited elements, considered individually and as an ordered combination, do not constitute an "inventive concept" that transforms independent claim 1 into patent-eligible subject matter. See Alice, 134 S. Ct. at 2355. Accordingly, we do not sustain the rejection of claim 1 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Claims 3, 4, 6-16, 19, and 20 fall with claim 1. With respect to claims 2, 5, 1 7, and 18, Appellant argues that "the Final Office Action fails to analyze each ... claim[] ... as a whole under 13 Appeal2017-008901 Application 14/703,230 35 U.S.C. § 101." Br. 26. According to Appellant, each claim "provide[s] significantly more than the identified abstract idea of ranking real estate agents." Id. at 26-29. We are not persuaded by Appellant's arguments because statements that merely point out what a claim recites will not be considered an argument for separate patentability of the claim. See Br. 26-29 (reciting limitations of claims 2, 5, 17, and 18). The Examiner is correct in that claims 2, 5, 17, and 18 "merely add further details of the abstract steps recited in claim 1 without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment." Ans. 17. In other words, claims 2, 5, 17, and 18 further describe the claimed method of ranking real estate agents of claim 1, that is, further describe the abstract idea. "[C]ases have not distinguished among different laws of nature according to whether or not the principles they embody are sufficiently narrow." Mayo, 566 U.S. at 88-89 ( citing Parker v. Flook, 437 U.S. 584 (holding narrow mathematical formula unpatentable)). A specific abstract idea is still an abstract idea. Accordingly, for the foregoing reasons, we likewise sustain the rejection of claims 2, 5, 17, and 18 under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. 14 Appeal2017-008901 Application 14/703,230 Rejection II Each of independent claims 1, 17, and 18 requires, inter alia, "calculating, by the one or more computers, a performance matching value." Br. 51, 55, and 56 (Claims App.). The Examiner finds that Sennott discloses the above noted limitation because Sennott teaches matching home buyers or sellers with appropriate real estate agents based on the needs of the home buyer or seller and the qualifications of the real estate agent, thereby suggesting utilizing a certain threshold or value (the performance matching value) for assessing "appropriateness" of a particular real estate agents for a particular buyer or seller, for the benefit of finding a most suitable agent for each customer[.] Final Act. 9--10 (citing Sennott, paras. 9, 12). In response, Appellant argues that "Sennott is completely silent [about] a performance matching value calculated from performance data with respect to search criteria." Br. 32 (emphasis added). We agree with Appellant that neither paragraph 9 nor 12 of Sennott discloses "calculating a performance matching value using one or more computers." Id. at 33. Appellant is correct in that "paragraph [0009] merely states that the HomeGift technology 'enables matching participants and supporters of participating NPOs with appropriate real estate agents,' and paragraph [0012] merely states that HomeGift matches real estate agents with home buyers or sellers." Id. Rather, in contrast to the claimed invention, Sennott discloses a manual process for selecting a real estate agent where an administrator conducts an interview with a participant to receive the characteristics or preferences that the participant is looking for in a real estate agent and then 15 Appeal2017-008901 Application 14/703,230 references various databases to find a suitable agent. Sennott, para. 83. As such, although we appreciate the Examiner's position that "a certain threshold or value ... [may be suggested by Sennott] for assessing 'appropriateness' of a particular real estate agent[] for a particular [participant]," nonetheless, this does not mean that Sennott necessarily discloses "calculating" such a value. For example, Sennott's matching of participants and real estates could be based on a real estate agent satisfying a pre-set number of the participant's requirements. Accordingly, we agree with Appellant that Sennott' s "manual process of proposing a real estate agent" does not disclose "calculating, by one or more computers, a performance matching value," as called for by each of independent claims 1, 17, and 18. Br. 34 (emphasis added). The Examiner's use of the Foley disclosure does not remedy the deficiency of Sennott discussed supra. See Final Act. 11-12. Accordingly, the Examiner's legal conclusion of obviousness is not supported by sufficient factual evidence, and thus, cannot stand. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("The legal conclusion of obviousness must be supported by facts. Where the legal conclusion is not supported by facts it cannot stand." (footnote omitted)). In conclusion, for the foregoing reasons, we do not sustain the rejection of claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over Sennott and Foley. 16 Appeal2017-008901 Application 14/703,230 SUMMARY The Examiner's decision to reject claims 1-20 under 35 U.S.C. § 101 as being as directed to ineligible subject matter is affirmed. The Examiner's decision to reject claims 1-20 under 35 U.S.C. § 103(a) as unpatentable over Sennott and Foley is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 17 Copy with citationCopy as parenthetical citation