Ex Parte Lyons

Patent Trial and Appeal Board

Mar 8, 2017

13207664 (P.T.A.B. Mar. 8, 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.
13/207,664 08/11/2011 William A. Lyons 4942.0003 6450
84278 7590 03/10/2017
PATENT LAW GROUP: Atkins and Associates P.C.
55 N. Arizona Place, Suite 104
Chandler, AZ 85225
EXAMINER
GOTTSCHALK, MARTIN A
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/10/2017 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):
main@plgaz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM A. LYONS
Appeal 2014-006815
Application 13/207,664
Technology Center 3600
Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
AMEE A. SHAH, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 2, 6—9, 11—17, and 19—28 which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2014-006815
Application 13/207,664
THE INVENTION
The Appellant’s claimed invention is directed to a real estate
investment system and method (Spec., para. 1). Claim 1, reproduced below
with the numbering in brackets added, is representative of the subject matter
on appeal.
1. A method of controlling a commerce system, comprising:
[1] collecting property information related to multiple
investment property assets from members of the commerce
system;
[2] storing the property information in a database;
[3] determining a plurality of sale transaction values for
the investment property assets based upon the property
information stored in the database;
[4] determining a plurality of key investment indicators
including capitalization rate, debt service ratio, net operating
income, cash flow, cash-on-cash return, return on investment,
and exit strategy from the sale transaction values;
[5] determining an investment rating based on the key
investment indicators;
[6] selecting one or more of the key investment indicators
and investment rating as search criteria;
[7] searching the property information in the database
using the search criteria;
[8] presenting the investment property assets matching
the search criteria;
[9] selecting one of the investment property assets
matching the search criteria to engage in a sale transaction; and
[10] controlling activity within the commerce system by
initiating the sale transaction for the selected investment
property asset.
2
Appeal 2014-006815
Application 13/207,664
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1, 2, 6—9, 11—17, 19, 20, and 26—28 are rejected under
35 U.S.C. § 101 as being directed to ineligible subject matter.
2. Claims 1, 2, 6—9, 11—17, and 19—28 are rejected under 35
U.S.C. § 103(a) as unpatentable over Halpin (US 2006/0190370 Al; pub.
Aug. 24, 2006) and Tripp (US 2007/0027787 Al; pub. Feb. 1, 2007).
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.1
ANAFYSIS
Rejection under 35 U.S.C. § 101
The Examiner has rejected claims 1, 2, 6—9, 11—17, 19, 20, and 26—28
under 35 U.S.C. § 101 as being directed to an abstract idea that could be
performed mentally (Ans. 2, 8—11). The Examiner has also determined that
the claimed recitation to the “database” is not limited to a machine and
regardless would only be nominal use of technology (Ans. 2, 11, 12).
In contrast, the Appellant argues that the rejection of claim 1 under 35
U.S.C. § 101 is improper because it has a specific practical application and
is associated with a machine (App. Br. 8—23).
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
3
Appeal 2014-006815
Application 13/207,664
We agree with the Examiner. Under 35U.S.C. § 101, an invention is
patent-eligible if it claims a “new and useful process, machine, manufacture,
or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: “laws of nature,
natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLSBanklnt’l, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the 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 the abstract idea. Id.
This is a search for an “inventive concept” an element or combination of
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Id. at 2358.
Here, we find that the claim is directed to the concept of selecting
investment property assets. This is a fundamental economic practice long
prevalent in our system of commerce, and is an abstract idea beyond the
scope of § 101. Further, the limitations of claim 1 can be performed
essentially in a series of mental steps.
4
Appeal 2014-006815
Application 13/207,664
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not. Here, the steps of the claim can be performed largely in a series of
mental steps. While claim 1 does require a “database,” there is no
requirement that the “database” is computer based and it could be a mere
collection of data. Regardless, even taking the “database” to be a computer
element, it fails to transform the nature of the claim from an abstract idea
beyond the scope of § 101. For the reasons above, the rejection of claim 1
and its dependent claims, which were not separately argued, are sustained.
The remaining claims are drawn to similar subject matter, and the
Appellant has presented the same or similar arguments for these claims. For
the same reasons given above, the rejection of the claims is not sustained as
well.
Rejection under 35 U.S.C. § 103(a)
The Appellant argues that the rejection of claim 1 under 35 U.S.C.
§ 103(a) is improper because the cited prior art fails to disclose claim
limitations [l]-[9] as listed in the claim above (App. Br. 36-44).
In contrast, the Examiner has determined that the cited rejection is
proper and that the cited claim limitations are found in the prior art
references Halpin and Tripp (Ans. 3—7, 12—17).
We agree with the Examiner. We have reviewed both the rejection of
record and the arguments put forth by the Appellant in the Appeal Brief. We
5
Appeal 2014-006815
Application 13/207,664
agree with and adopt the findings of fact made by the Examiner, and
determine that all the argued claim limitations [l]-[9] have been shown in
the prior art.
For example, the Appellant argues that claim limitations [1] and [2]
are not shown in the prior art (Appeal Br. 36—39). Claim limitations [1] and
[2] require:
[1] collecting property information related to multiple
investment property assets from members of the commerce
system; [and]
[2] storing the property information in a database
However, as noted in the rejection, these claimed elements are found in
Halpin at paras. 20, 39, and 99 (Ans. 3, 13). Halpin at para. 39 discloses that
property data can be entered (collected) and that this can be done for
different Candidate Transactions which would be multiple properties.
Halpin at para. 20 also discloses that after submittal (collecting), properties
(multiple) can be ranked against each other. As the property data is
collected and ranked it must be stored at least temporarily in some manner.
Thus, the argued claim limitations [1] and [2] have been shown in the prior
art as asserted by the Examiner.
Similarly, the Examiner’s citations to the argued claim limitations
[3] —[9] have also been shown in the prior art, and we agree with and adopt
those facts. For this reason, the rejection of claim 1 is sustained.
Independent claims 7, 14, and 21 have claim limitations that are
similar to those of claim 1. The Appellant has presented the same or similar
arguments for independent claims 7, 14, and 21 (App. Br. 45—56). We agree
with the Examiner’s findings that the argued claim limitations from claims
7, 14, and 21 are found in the prior art as well as outlined in the Answer at
6
Appeal 2014-006815
Application 13/207,664
pages 3—8 and 12—17. For this reason, the rejection of claims 7, 14, and 21
is sustained as well. The Appellant has not presented separate arguments for
the dependent claims, and the rejection of these claims is therefore sustained
as well.
CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1, 2, 6—9, 11—17, 19, 20, and 26—28 under 35 U.S.C. § 101.
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1, 2, 6—9, 11—17, and 19—28 under 35 U.S.C. § 103(a).
DECISION
The Examiner’s rejection of claims 1, 2, 6—9, 11—17, and 19—28 is
sustained.
AFFIRMED
7