Ex Parte Graboske et alDownload PDFPatent Trial and Appeal BoardDec 28, 201713080231 (P.T.A.B. Dec. 28, 2017) Copy Citation 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. 13/080,231 04/05/2011 Benjamin Graboske 375800US8 1395 113694 7590 01/02/2018 OHIrm/Gnrelncrir Tnr EXAMINER 1940 Duke Street Alexandria, VA 22314 NGUYEN, THUY-VI THI ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 01/02/2018 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): oblonpat @ oblon. com patentdocket @ oblon. com tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BENJAMIN GRABOSKE and SUSAN ALLEN Appeal 2016-006095 Application 13/080,231 Technology Center 3600 Before CARLA M. KRIVAK, NABEEL U. KHAN, and KARA L. SZPONDOWSKI, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2016-006095 Application 13/080,231 STATEMENT OF THE CASE Appellants’ invention is directed to “to the field of real estate” and “the field of appraisal reports” (Spec. 1:12-13). Specifically, Appellants’ invention includes a “method, computer program product, device, and system for creating an electronic appraisal report and auditing system” (emphasis omitted) (Title). Independent claim 1, reproduced below with the contested limitation italicized, is exemplary of the subject matter on appeal. 1. A portable electronic appraisal device comprising: a display; a data input module; a location detection module configured to detect a geographic position; a communications interface configured to communicate with a real estate database; a processor configured to identify one or more comparables for a property located at the geographic position detected by the location detection module and to create an electronic appraisal template including a plurality of data fields, the plurality of data fields being automatically populated based at least in part on the identified one or more comparables, and configured to generate a draft appraisal report; an audit tracking module configured to maintain a record of comparables initially presented for inclusion in the draft appraisal report, but ultimately excluded from a final appraisal report or comparables added to the final appraisal report, and configured to prompt an input of an explanation why the comparables were excluded from or added to the final appraisal report in response to the comparables being excluded from or added to the final appraisal report; and an analytics component configured to identify a risk of potential appraisal fraud by comparing the comparables initially presented in the draft appraisal report to the comparables 2 Appeal 2016-006095 Application 13/080,231 included in the final appraisal report based on selection, modification, or adjustments made to the comparables initially presented relative to the comparables included in the final appraisal report. REJECTION The Examiner rejected claims 1-20 under pre-AIA 35 U.S.C § 112 as failing to comply with the written description requirement (Final Act. 2; Ans. 2). ANALYSIS The Examiner finds the limitation an analytics component configured to identify a risk of potential appraisal fraud by comparing the comparables initially presented in the draft appraisal report to the comparables included in the final appraisal report based on selection, modification, or adjustments made to the comparables initially presented relative to the comparables included in the final appraisal report in Appellants’ claim 1, and similar limitation in independent claims 6, 14, 19, and 20, is not described in Appellants’ Specification so as to reasonably convey to a skilled artisan Appellants had possession of the claimed invention (Final Act. 2; Ans. 2). That is, the Examiner finds, Appellants’ paragraph 47 supports the “analytics component configured to identify a risk of potential appraisal fraud, but does not” have support for an analytics component identifying risk by “comparing the comparables initially presented in the draft appraisal report to the comparables included in the final appraisal report” (Ans. 3). 3 Appeal 2016-006095 Application 13/080,231 Appellants respond the Examiner is in error as the “Comparable Addition and Removals” chart (810) shown in Figure 5 shows “percentages of properties that were added and/or removed from an appraisal report (page 14, lines 19-21)” (Br. 8). Further, Appellants contend, the title of the chart (“Comparable Additions and Removals”) “relates to a comparison of an initial report from a modified report” {id.). We do not agree. The test for written description is summarized in Purdue Pharma L.P. v. FauldingInc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (internal quotation marks and citations omitted): In order to satisfy the written description requirement, the disclosure as originally filed does not have to provide haec verba support for the claimed subject matter at issue. . . . Nonetheless, the disclosure must... convey with reasonable clarity to those skilled in the art that. . . [the inventor] was in possession of the invention. . . . Put another way, one skilled in the art, reading the original disclosure, must immediately discern the limitation at issue in the claims. . . . That inquiry is a factual one and must be assessed on a case-by-case basis. Drawings alone may be sufficient to satisfy the written description requirement of § 112 (see, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1564 (Fed. Cir. 1991)), along with adequate descriptive support provided for a recited function if the disclosed device inherently performs that function, even if the Specification makes no mention of the function being performed (see In re Reynolds, 443 F.2d 384, 389 (CCPA 1971)). In the present case, Appellants’ drawings, particularly Figure 5, do not prove sufficient to support the written description requirement. We note Appellants’ Specification recites Figure 5 includes a chart compiled with data which shows percentages of additions and removals from a credit 4 Appeal 2016-006095 Application 13/080,231 report. However, the additions and removals are with respect to comparables and are not comparisons; they are merely percentages—with no support in the Specification as to what the specific percentages refer. Further, Appellants have not identified where in the Specification, either extrinsically or inherently, the analytics component compares a draft appraisal with a final appraisal (Final Act. 3, 5-6 (“there [is] no indication of what percentage or threshold would be considered as the risk of potential fraud based on the Comparable Additions and Removable chart 810, as well as the connection between identifying a risk of potential appraisal fraud with the comparing the comparables in the draft report to the comparables in the final appraisal report”); Ans. 5-6, 9). We further agree with the Examiner that any risk identified is by a person (appraiser’s reviewer) and not the analytics component (Ans. 9; Spec. 14:26-27). We find that the record before us does not convey with reasonable clarity Appellants were in possession of the subject matter of the disputed limitation as of the filing date of the present application. Therefore, for the above reasons, we are not persuaded of Examiner error and sustain the Examiner’s rejection of claims 1-20 as failing to comply with the written description requirement. DECISION The Examiner’s decision rejecting claims 1-20 is affirmed. 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 5 Copy with citationCopy as parenthetical citation