Ex Parte Malyala

Patent Trial and Appeal Board

Oct 8, 2013

11863706 (P.T.A.B. Oct. 8, 2013)

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.
11/863,706 09/28/2007 Krishna Malyala Malyala-1 2170
7590 10/08/2013
Walter J. Tencza Jr.
Suite 210
100 Menlo Park
Edison, NJ 08837
EXAMINER
ROBINSON, KITO R
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
10/08/2013 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 1
___________ 2
3
BEFORE THE PATENT TRIAL AND APPEAL BOARD 4
___________ 5
6
Ex parte KRISHNA MALYALA 7
___________ 8
9
Appeal 2011-010315 10
Application 11/863,706 11
Technology Center 3600 12
___________ 13
14
15
Before ANTON W. FETTING, BIBHU R. MOHANTY, and 16
THOMAS F. SMEGAL, Administrative Patent Judges. 17
FETTING, Administrative Patent Judge. 18
DECISION ON APPEAL 19
Appeal 2011-010315
Application 11/863,706

2

STATEMENT OF THE CASE1 1
Krishna Malyala (Appellant) seeks review under 35 U.S.C. § 134 of a 2
final rejection of claims 1-14 and 16-21, the only claims pending in the 3
application on appeal. We have jurisdiction over the appeal pursuant to 4
35 U.S.C. § 6(b). 5
The Appellant invented a way of searching for real estate that is 6
typically user centric as opposed to price centric. (Spec. 3: Summary of the 7
Invention). 8
Claims 1, 3, 14, and 21 are the only independent claims. Claims 4-7 12, 9
and 13 depend from claim 3 and the remaining claims depend from claim 1. 10
Claims 14 and 21 have no dependent claims. 11
An understanding of the invention can be derived from a reading of 12
exemplary claim 1, which is reproduced below [bracketed matter and some 13
paragraphing added]. 14
1. A method comprising the steps of: 15
[1] supplying one or more user dependent costs 16
for each of a plurality of real properties 17
to a computer processor 18
wherein the one or more user dependent costs 19
for each of the plurality of real properties 20
are not related to 21
a mortgage, 22
utilities, 23
taxes, 24

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed November 29, 2010) and the Examiner’s Answer (“Ans.,” mailed
March 15, 2011).
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Application 11/863,706
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maintenance, 1
waste removal, 2
or insurance 3
for a real property, 4
and 5
the one or more user dependent costs 6
for each of the plurality of real properties 7
are such that 8
different users will have different user 9
dependent costs 10
for the same real property 11
for each of the plurality of real 12
properties; 13
[2] entering a user monthly affordable amount for a user 14
into an interactive device; 15
[3] using the user monthly affordable amount 16
to search on the internet for real properties, 17
wherein the search is done by use of a computer; 18
[4] displaying search results on a computer monitor, 19
wherein the search results include a plurality of total 20
living costs, 21
one total living cost for each of a plurality of real 22
properties; 23
[5] wherein each total living cost is within a range 24
of the user monthly affordable amount; 25
and 26
[6] wherein each total living cost 27
for each of the plurality of real properties 28
includes 29
the one or more user dependent costs 30
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for each of the plurality of real properties 1
and 2
one or more costs related to 3
a mortgage, utilities, taxes, maintenance, 4
waste removal, or insurance for the 5
corresponding real property, 6
such that different users will have different 7
total living costs 8
for the same real property 9
for each of the plurality of real properties. 10
The Examiner relies upon the following prior art: 11
Ran US 6,317,686 B1 Nov. 13, 2001
Welnicki US 2002/0073005 A1 Jun. 13, 2002
Haynie US 2004/0205008 A1 Oct. 14, 2004
Wyckoff US 2006/0080246 A1 Apr. 13, 2006
Heflin US 2006/0190279 A1 Aug. 24, 2006
Wiseman US 2007/0112729 A1 May 17, 2007
Ino JP 2004-102646 Apr. 2, 2004
http://www.gas-cost.net, retrieved by www.archive.org on July 9, 2007 12
at http://replay.waybackmachine.org/20070709062445/http://www.gas-13
cost.net 14
Claims 1-3, 20, and 21 stand rejected under 35 U.S.C. § 103(a) as 15
unpatentable over Heflin and Ino. 16
Claims 5 and 8 stand rejected under 35 U.S.C. § 103(a) as unpatentable 17
over Heflin, Ino, and Wiseman. 18
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Claims 14, 18, and 19 stand rejected under 35 U.S.C. § 103(a) as 1
unpatentable over Heflin and Welnicki.2 2
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over 3
Heflin, Ino, and Wyckoff. 4
Claims 4, 6, 9-13, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as 5
unpatentable over Heflin, Ino, Wiseman, and Official Notice. 6
ISSUES 7
The issues of obviousness turn primarily on whether the limitations 8
beyond a conventional query of the use of a total cost and the use of costs 9
that vary with the user for a given property, that likely must be computed, 10
are predictable extensions. 11
FACTS PERTINENT TO THE ISSUES 12
The following enumerated Findings of Fact (FF) are believed to be 13
supported by a preponderance of the evidence. 14
Facts Related to the Prior Art 15
Heflin 16
01. Heflin is directed to large scale network marketing and 17
management services for handling the sale, rental, marketing and 18
management of real property in a global network based 19
environment. Heflin, para. [0001]. 20
02. Heflin generally includes receiving a set of property related 21
information including a location parameter, a price parameter, and 22
an amenities listing from the property owner and loading this 23

2 The rejection of claims 18 and 19 necessarily includes Ino as well, as both
of these claims depend from claim 1. We take this omission to be a
typographical error, as this discrepancy is not argued by Appellants.
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information into a database accessible to a processing unit. This 1
processing unit is further in communication with a display unit 2
such that, upon a request from a prospective resident, the 3
processing unit may transmit the property related information to a 4
remote display device for consideration. Heflin, para. [0017]. 5
03. Heflin’s advanced search page illustrated in FIGS. 15A and 15B 6
allows an end user to direct a search to a more specific set of 7
property details and is a powerful tool in narrowing choices to a 8
more specific set of properties. The advanced search page 9
includes selection boxes or text input boxes for search parameters 10
such as a name, address1, address2, city, state, zip, type (single 11
family home, condominium, co-op, multi-family home, 12
apartment), category (rental, luxury, vacation rental, commercial, 13
real estate), active/inactive, price (sale price, lease price, 14
rent/month), number of beds, number of baths, minimum square 15
feet, age of home (any age, newer home 0-5 years, older home 16
75+ years), number of floors (any number, two or more stories, 17
single story), parking/garage (anything, attached parking, garage 1 18
or more, garage 2 or more, garage 3 or more, RV parking, 19
carport), amenities (basement, fireplace, main floor bathroom, 20
central air, forced air, main floor bedroom, den/office, hardwood 21
floors, spa/hot tub, dining room, horse facilities, swimming pool, 22
disability features, horses allowed, family room, laundry room), 23
lot features (lot size, corner lot, waterfront, river view, cul-de-sac, 24
city lights view, ocean view, golf course lot, mountain view, water 25
view), community features (clubhouse/rec. room, recreation 26
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facilities, spa/hot tub, exercise area, security features, swimming 1
pool, golf, senior community, tennis), financial options (lease 2
option considered, trade considered), description, and MLS ID. 3
Heflin, para. [0074]. 4
Ino 5
04. Ino is directed to querying cost of living expenses for specified 6
items. Ino, para. [0001]. 7
05. Ino includes a real estate site search engine that provides detailed 8
cost information of real estate address, including such costs as 9
deposit, reward, house rent, and transit fares. Ino, para. [0008]. 10
06. Expenses are calculated in (402). Here, the transportation 11
expenses per month are calculated based on the value read by 12
the input value reading 401, and the nearby station information 13
acquired by the station search engine site. The information on 14
the destination inputted by the information and user of the 15
nearby station is specifically sent to the station search engine 16
site 101, and the information on transportation expenses is 17
received from the station search engine site 101. The station 18
search engine site 101 may also perform calculation of commuter 19
pass costs, based on the number of the months used, that is also 20
sent to the station search engine site 101. Total expenses value 21
calculation is carried out in (403). Here, the total value of each 22
item of expenses, such as a house rent indicated to object 23
information and the cost of equipment, and transportation 24
expenses computed by the expense calculation 402, is computed, 25
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and it displays on the aggregate total cost display field 704. Ino, 1
para. [0014]. 2
07. If the rough expense button 505 is clicked, based on the 3
information which the user inputted, the total value of expenses, 4
including a house rent per month and the cost of equipment, and 5
transportation expenses will be computed, and it will display on 6
the aggregate total cost indicator 704. Ino, para. [0017]. 7
Welnicki 8
08. Welnicki is directed to a computerized lifestyle planning method 9
and system operable over a computer network. Welnicki, para. 10
[0002]. 11
ANALYSIS 12
As to claim 1, we are not persuaded by the Appellant’s argument that 13
Heflin returns listings for search results, which may include 14
prices of real properties. (Heflin, paragraph 76). However the 15
prices for the real properties will be the same for all users. [] In 16
Ino, a user chooses or searches for a specific article such as real 17
estate first and then various expenses are determined for “the 18
real estate article which the user chose.” 19
App. Br. 10-11. The Appellant’s contention does not persuade us of error on 20
the part of the Examiner because the Appellant responds to the rejection by 21
attacking the references separately, even though the rejection is based on the 22
combined teachings of the references. Nonobviousness cannot be 23
established by attacking the references individually when the rejection is 24
predicated upon a combination of prior art disclosures. See In re Merck & 25
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). 26
Limitations [2]-[4] recite a conventional database query following 27
limitation [1] of entering part of the search criteria. Limitations [4] and [5] 28
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are not steps per se, but are “wherein” clauses modifying the nature of the 1
criteria for data retrieved. 2
In general, a search query is notoriously well-known and the criteria 3
and target are no more than arbitrary bit patterns representing what is in the 4
mind of the beholder and therefore given no patentable weight. In a recent 5
non-precedential decision, our reviewing court reminded us of the 6
applicability of the precedential In re Gulack, 703 F.2d 1381 (Fed. Cir. 7
1983), In re Bernhart, 417 F.2d 1395 (CCPA 1969) and In re Lowry, 32 8
F.3d 1579 (Fed. Cir. 1994) decisions. 9
We have held that patent applicants cannot rely on printed 10
matter to distinguish a claim unless “there exists [a] new and 11
unobvious functional relationship between the printed matter 12
and the substrate.” In re Gulack, 703 F.2d 1381, 1386 13
(Fed.Cir.1983). . . . 14
. . . [T]he Board did not create a new “mental 15
distinctions” rule in denying patentable weight . . . . On the 16
contrary, the Board simply expressed the above-described 17
functional relationship standard in an alternative formulation—18
consistent with our precedents—when it concluded that any 19
given position label’s function . . . is a distinction “discernable 20
only to the human mind.” . . . ; see In re Lowry, 32 F.3d 1579, 21
1583 (Fed.Cir.1994) (describing printed matter as “useful and 22
intelligible only to the human mind”) (quoting In re Bernhart, 23
. . . 417 F.2d 1395, 1399 (CCPA 1969)). 24
In re Xiao, 462 Fed. Appx. 947, 950-52 (Fed. Cir. 2011) (Non-25
precedential). Thus, non-functional descriptive material, being useful and 26
intelligible only to the human mind, is given no patentable weight. See also 27
In re Ngai, 367 F.3d 1336, 1339 (Fed. Cir. 2004). 28
Thus, any such search query is predictable as no more than the repetition 29
of the well-known steps for carrying out a query. 30
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In claim 1, the limitations beyond a conventional query are the use of a 1
total cost and the use of costs that vary with the user for a given property, 2
which likely must be computed. The issues are whether these are 3
predictable extensions. 4
The Examiner found that Heflin describes using cost per time period as a 5
search criterion (FF 03) and therefore using total budget cost per time period 6
would be a predictable search criterion, so long as the database supported 7
such a search. The Examiner found that Ino described adding costs other 8
than those directly related to the housing unit to the total cost and that Ino 9
also described allowing a user to personalize the cost criteria by entering 10
his/her commuting destination to computer transportation costs that vary 11
with that user for the same housing address. See FF 06. Ino thus also 12
described a database supporting a total cost search query. We conclude that 13
the limitations beyond a conventional query of the use of a total cost and the 14
use of costs that vary with the user for a given property, that likely must be 15
computed, are predictable extensions. 16
Claims 3, 14, and 21 are broader than claim 1 in that they do not contain 17
a limitation personalizing costs for the user. Claim 3 recites “a commuting 18
cost for the user from a location of a corresponding real property to a user 19
work location,” but the article “a” rather than “the” in the phrase “a user 20
work location” allows a hypothetical work location common to any user 21
within its scope. 22
The arguments as to the remaining claims repeat the arguments in 23
support of claim 1. 24
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CONCLUSIONS OF LAW 1
The rejection of claims 1-3, 20, and 21 under 35 U.S.C. § 103(a) as 2
unpatentable over Heflin and Ino is proper. 3
The rejection of claims 5 and 8 under 35 U.S.C. § 103(a) as unpatentable 4
over Heflin, Ino, and Wiseman is proper. 5
The rejection of claims 14, 18, and 19 under 35 U.S.C. § 103(a) as 6
unpatentable over Heflin, (Ino,) and Welnicki is proper. 7
The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over 8
Heflin, Ino, and Wyckoff is proper. 9
The rejection of claims 4, 6, 9-13, 16, and 17 under 35 U.S.C. § 103(a) 10
as unpatentable over Heflin, Ino, Wiseman, and Official Notice is proper. 11
DECISION 12
The rejection of claims 1-14 and 16-21 is affirmed. 13
No time period for taking any subsequent action in connection with this 14
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. 15
§ 1.136(a)(1)(iv) (2011). 16
17
AFFIRMED 18
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mls 25