Ex Parte Graboske et al

Patent Trial and Appeal Board

Dec 28, 2017

13080231 (P.T.A.B. Dec. 28, 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.
13/080,231 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
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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
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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).
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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
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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
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