Ex Parte Graboske

Patent Trial and Appeal Board

Sep 26, 2013

11771114 (P.T.A.B. Sep. 26, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte BENJAMIN C. GRABOSKE
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Appeal 2012-002057
Application 11/771,114
Technology Center 3600
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Before HUBERT C. LORIN, ANTON W. FETTING, and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
An oral hearing was held on June 6, 2013.

STATEMENT OF THE CASE
Benjamin C. Graboske (Appellant) seeks our review under 35 U.S.C.
§ 134 (2002) of the final rejection of claims 1-10. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).
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SUMMARY OF DECISION
We AFFIRM and enter a NEW GROUND of rejection pursuant to 37
C.F.R. § 41.50(b).1

THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A machine-readable medium for validating appraisal
input data entered into an appraisal report that includes a
valuation appraisal comprising computer-readable instructions
that when executed by a processor cause the processor to:
receive the appraisal input data for a property, said
appraisal input data being input through an interface;
receive through the interface property data for the
property from a public records database;
identify a list of appraisal items that are present in the
appraisal input data and that form a basis on which the
valuation appraisal is performed;
setting a user-established discrepancy threshold;
calculate with the processor a difference amount between
the appraisal input data and the property data for each appraisal
item;
determine whether the difference amount exceeds the
user-established discrepancy threshold; and

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Jun. 29, 2011) and Reply Brief (“Reply Br.,” filed Sep. 21, 2011),
and the Examiner’s Answer (“Ans.,” mailed Aug. 19, 2011).
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generate a discrepancy message that reports a
discrepancy when the difference amount exceeds the user-
established discrepancy threshold.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Ashlock
Palmer

US 2005/0216292 A1
US 2006/0277141 A1
Sep. 29, 2005
Dec. 7, 2006
The following rejection is before us for review:
1. Claims 1-10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Palmer and Ashlock.

ISSUE
Did the Examiner err in rejecting the claims as obvious to one of
ordinary skill in the art at the time of the invention given the combined
disclosures of Palmer and Ashlock?

FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.

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ANALYSIS
The Appellant argued claims 1-10 as a group (App. Br. 7). We select
claim 1 as the representative claim for this group, and the remaining claims
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner’s position is that Palmer discloses the claimed medium
but for its “‘appraisal validation’” features” (Ans. 10). Those features are
said to be disclosed in Ashlock. The Examiner concludes that it would have
been obvious to apply
Ashlock's "appraisal validation" features to Palmer with
similar features would have been recognized by those of
ordinary skill in the art as resulting in an improved
method/system that would provide appraising real estate
properties, processing data, and comparing data with the
use of computer networks and the Internet with "appraisal
validation" features.
Ans. 10.
The Appellant challenges the Examiner on four grounds.
First, the Appellant argues that “[t]he Examiner errs in fail[ing] to
address the limitation of ‘validating appraisal input data entered into an
appraisal report.’” App. Br. 7. We disagree with this argument. On pages
8-9, the Examiner states that “Ashlock discloses ... ‘validate’ (construed as
the claimed validation or validating step), and/or confirm the information
provided by one or more third-party databases (i.e., public databases) by
comparing (construed as validating or validation) this third party information
[with] the observations reported by the data gatherer (i.e., appraiser) [0044]
... .” Accordingly, the Examiner did address the argued-over limitation.

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Second, the Appellant argues that “[t]he Examiner errs in finding
that Ashlock's comparing feature is equivalent to ‘calculate with the
processor a difference amount between the appraisal input data and the
property data for each appraisal item.’” App. Br. 8. We do not find the
Examiner erred. There is no dispute that Ashlock discloses comparing
gathered data with third-party data. See App. Br. 6: “Ashlock describes the
data gatherer may use third party data and may "clean" this data by
comparing it to his or her observations,” citing paragraph [0015] of Ashlock.
Determining a difference between the data is inferred in the performing of
the comparing of the two data. In evaluating references, it is proper to take
into account not only the specific teachings of the references but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). “[C]alculat[ing] ...
a difference amount” (claim 1) reasonably broadly encompasses the
determining of a difference between data that is inferred in the performing of
a comparing step as per Ashlock. As to the use of a processor to perform the
calculation, we agree with the Examiner that that limitation is not patentably
consequential as it merely converts Ashlock’s manual comparing into an
automatic one. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157,
1162 (Fed. Cir. 2007).
Third, the Appellant argues that “[t]he Examiner errs in finding that
Ashlock suggests modifying Palmer to ‘determine whether the
difference amount exceeds the user-established discrepancy threshold;
and generate a discrepancy message that reports a discrepancy when
the difference amount exceeds the user-established discrepancy
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threshold.’” App. Br. 10. In that regard, the Examiner (Ans. 39-40) found,
and it is not disputed (see App. Br. 5), that Palmer provides for a warning if
a discrepancy exceeds a user-defined threshold (see para. [0044]) and based
on difference values entered in a report can be adjusted (see para. [0028]).
Given this disclosure, we do not see that the Examiner erred in finding that
Palmer would lead one of ordinary skill in the art to “determine whether the
difference amount exceeds the user-established discrepancy threshold; and
generate a discrepancy message that reports a discrepancy when the
difference amount exceeds the user-established discrepancy threshold”
(claim 1). The Appellant appears to focus our attention on the type of data
employed; that is, “Palmer does not use ‘property data for the property from
a public records database’” (App. Br. 11, emphasis added). However, the
difference between data from a public records database and from somewhere
else is a characterization of a difference in the type of information retrieved.
Data from a “public records database” will be distinguished by its content –
content that will be different from the content of data originating from
somewhere else. This is a descriptive difference in the data that is not
functionally related to any structure in the data or the overall medium that is
claimed. Because it is a descriptive difference rather than a functional or
structural one, the fact that the data comes from a public records database
rather than from somewhere else is not patentably consequential.
Lastly, the Appellant argues that “[t]he Examiner errs in failing to
provide objective reasons to combine the teaching of Palmer and
Ashlock to arrive at the claimed invention.” App. Br. 12. We disagree.
The Examiner provides ample reasoning for establishing a prima facie case
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of obviousness. The argument focuses on the content of the data. But, as
explained earlier, the content of the data is not in and of itself patentably
consequential. Note that the instructions call for (a) receiving a first type of
data input through an interface; (b) receiving a second type of data from a
database; (c) identifying a list of items that are present in the first data and
that form a basis to perform an appraisal; (d) setting a user-established
discrepancy threshold; (e) calculating with a processor a difference amount
between the first data and second data for each item; (f) determining whether
the difference amount exceeds the threshold; and (g) generating a message
that reports a discrepancy when the difference amount exceeds the user-
established discrepancy threshold. In our view, the Examiner has made out a
prima case, with some articulated reasoning with some rational
underpinning, that this combination of instructions, as reasonably broadly
construed, would have been obvious over the combined disclosures of the
cited prior art to one of ordinary skill in the art at the time of the invention.
We have reviewed the arguments, but do not find them persuasive as
to error in the rejection.

NEW GROUND OF REJECTION
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
on claims 1-10.
Taking sole independent claim 1 as representative, it recites “[a]
machine-readable medium” and then recites a series of “computer-readable
instructions.” Giving claim 1 the broadest reasonable construction, we find
that claim 1 encompasses a signal. A signal does not fit within one of the
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four statutory categories of patent-eligible subject matter under 35 U.S.C. §
101. In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007). Since claim 1 as
we have reasonably broadly construed it, encompasses a signal, we find that
claim 1 is directed to non-statutory subject matter. (See Subject Matter
Eligibility of Computer Readable Media, 1351 Off. Gaz. Pat. Off. 212 (Feb.
23, 2010).
Accordingly, we reject claim 1, and claims 2-10 that depend from it,
under 35 U.S.C. § 101 as being direct to non-statutory subject matter.

DECISION
The decision of the Examiner to reject claims 1-10 is affirmed.
We enter a new ground of rejection on claims 1-10.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (Aug.
12, 2004), 1286 Off. Gaz. Pat. Office 21 (Sep. 7, 2004)). 37 C.F.R. §
41.50(b) provides “[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner . . . .
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• (2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record . . . .

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)

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