Ex Parte Martinovic et al

Patent Trial and Appeal Board

Jun 22, 2018

13792464 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131792,464 03/11/2013
7590
Create Inc.
1133 15th Street, NW
12th Floor
Washington, DC 20005
06/22/2018
FIRST NAMED INVENTOR
Stefan Martinovic
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3 73 25-0002001 2716
EXAMINER
HENRY, MATTHEW D
ART UNIT PAPER NUMBER
3683
MAILDATE DELIVERY MODE
06/22/2018 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
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEP AN MARTINO VIC and EDWARD R. SWITZER
Appeal2016--005137 1
Application 13/792,4642
Technology Center 3600
Before BRADLEY B. BAY AT, MATTHEWS. MEYERS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 4, 8, 9, 12-14, 17, 18, 20, and 25-33. We have
jurisdiction under 35 U.S.C. § 6(b).
1 Our decision references Appellants' Appeal Brief ("Appeal Br.," filed
October 5, 2015) and Reply Brief ("Reply Br.," filed March 11, 2016), the
Examiner's Answer ("Ans.," mailed February 10, 2016), and Final Office
Action ("Final Act.," mailed May 5, 2015).
2 Appellants identify "Creat LLC" as the real party in interest (Appeal Br. 1 ).
We note that "Create Inc." is the assignee recorded (Sept. 5, 2014) with the
USPTO as per reel/frame number 033673/0793.
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Application 13/792,464
We AFFIRM.
CLAIMED INVENTION
Appellants' claims relate generally to "systems and processes for an
analysis tool for use in the real estate industry that provides consistent,
transparent, and efficient analysis of a real estate development project"
(Spec. if 2).
Claims 1, 9, and 1 7 are the independent claims on appeal. Claim 1,
reproduced below with minor formatting changes and added bracketed
notations, is illustrative of the subject matter on appeal:
1. A computer-implemented method comprising:
[a] providing a user interface for specifying details of a
development project;
[b] receiving, through the user interface, first user-input
from a first user specifying (i) a type for the development project,
and (ii) a location for the development project;
[ c] determining one or more projected outcomes for the
development project based on data for the specified type,
location, zoning regulations data, and land use data, where the
land use data comprises floor space or parking specifications for
development projects having the specified type; and
[d] generating, an analysis of each of the one or more
projected outcomes, wherein generating the analysis comprises
generating a first rendering of a building of the development
project, generating the first rendering comprising:
[ e] identifying a boundary of a parcel for the
building based on the location and the zoning regulations
data, where the boundary is positioned with respect to a
public street;
[ fJ determining maximum size data for the building
from the land use data and the zoning regulations data,
where the maximum size data for the building comprises
constraints of lot occupancy, a building height, a number
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of stories, and at least one of floor space or parking
requirements;
[g] generating an external shape of the building
from the boundary and the maximum size data; and
[h] generating the first rendering from the external
shape;
[i] receiving second user-input specifying adjustments to
dimensions of the first rendering;
Li] generating a second rendering from the second user-
input and the first rendering; and
[k] providing, through the user interface, the second
rendering of the building.
REJECTIONS 3
Claims 1, 4, 8, 9, 12-14, 17, 18, 20, and 25-33 are rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement (see Final Act. 6).
Claims 1, 4, 8, 9, 12-14, 17, 18, 20, and 25-33 are rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter (see Final Act. 8-
10).
Claims 1, 8, 9, 17, 18, 25-31, and 33 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Bleakley (US 2013/0346151 Al, pub.
Dec. 26, 2013) and Sigaty (US 2013/0132041 Al, pub. May 23, 2013) (see
Final Act. 10-19).
Claims 4, 12, and 20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bleakley, Sigaty, and Ponce de Leon (US 2008/0195452
Al, pub. Aug. 14, 2008) (see Final Act. 19-21).
3 The rejection under 35 U.S.C. § 112, second paragraph, was withdrawn by
the Examiner (see Ans. 3).
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Claims 13, 14, and 32 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Bleakley, Sigaty, and Settino (US 2013/0290052 Al, pub.
Oct. 31, 2013) (see Final Act. 21-24).
ANALYSIS
Non-statutory subject matter
Independent claims 1, 9, and 17, and dependent claims 4, 8, 12-14, 18, 20,
and 25-33
Appellants argue claims 1, 4, 8, 9, 12-14, 17, 18, 20, and25-33 as a
group (see Appeal Br. 6-7). We select independent claim 1 as
representative. Claims 4, 8, 9, 12-14, 17, 18, 20, and 25-33 stand or fall
with independent claim 1. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78-79 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice Corp. Pty.
Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014). The first step in that
analysis is to "determine whether the claims at issue are directed to one of
those patent-ineligible concepts." Id. (citing Mayo, 566 U.S. at 79)
(emphasis added). If so, the second step is to consider the elements of the
claims "individually and 'as an ordered combination"' to determine whether
the additional elements "'transform the nature of the claim' into a patent-
eligible application." Id. (quoting Mayo, 566 U.S. at 78-79).
In other words, the second step is to "search for an 'inventive
concept'-i.e., an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
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upon the [ineligible concept] itself."' Id. (alteration in original) (quoting
Mayo, 566 U.S. at 72-73). The Court acknowledged in Mayo, that "all
inventions at some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We,
therefore, look to whether the claims focus on a specific means or method
that improves the relevant technology or are instead directed to a result or
effect that itself is the abstract idea, and merely invoke generic processes and
machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336
(Fed. Cir. 2016).
Appellants argue that the Examiner's rejection is in error because the
Examiner fails establish a prima facie case of subject matter ineligibility (see
Appeal Br. 6-7). More particularly, Appellants argue the Examiner "does
not identify a single previously known application of the alleged abstract
ideas that would be preempted by the presently claimed combination of
features" (id.) and the Examiner "merely provides conclusory statements
without identifying any particular facts in the record of this application that
support the stated conclusion" (id. at 7). Appellants' arguments are not
persuasive.
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
analyzes the claims using the Mayo/Alice two-step framework. Ans. 4---6.
Here, the Examiner maintains the claims are directed to
determining one or more projected outcomes, generating an
analysis for each of the one or more projected outcomes,
identifying a boundary, determining a maximum size data,
generating an external shape, generating the first rendering, and
generating a second rendering) using a computer and generic
hardware/software, and is considered to amount to nothing more
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than reqmnng a computer workstation and generic
hardware/software to merely carry out the abstract idea itself.
(Ans. 22-23). More particularly, the Examiner looks to the language of the
claims and determines the
claims are directed to "receiving first user input, generating an
external shape, generating the first rendering, receiving second
user input" (organizing human activities, using categories to
organize store and transmit information, and comparing new and
stored information and using rules to identify options),
"determining one or more projected outcomes, generating an
analysis for each of the one or more projected outcomes,
identifying a boundary, and determining a maximum size data"
(mathematical equation/formula and organizing information
through mathematical correlations) which is considered to be an
abstract idea. For example, the claimed limitations
"determining ... ", "receiving ... ", "generating ... ",
"providing ... ", and "identifying ... " etc. can be performed
manually.
(Final Act. 8-9; see also Ans. 20-21 ). The Examiner cites abstract ideas
from previous judicial decisions and compares the present idea to the
abstract ideas in those decisions (see Final Act. 8-10; see also Ans. 10; 20-
23). The Examiner further determines that the additional elements of the
claims, taken alone and as an ordered combination, do not ensure that the
claims amount to significantly more than the abstract idea (see Ans. 21 ).
The Examiner, thus, has clearly followed the two-part framework specified
by the Supreme Court in Mayo/Alice consistent with Office guidelines.
In this regard, the Examiner has articulated the reasons for the
rejection and has notified Appellants of the reasons for the rejection
"together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application."
35 U.S.C. § 132. And we find that, in doing so, the Examiner sets forth a
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prima facie case of subject matter ineligibility. See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011); Chester v. Miller, 906 F.2d 1574, 1578 (Fed.
Cir. 1990) (Section 132 "is violated when a rejection is so uninformative that
it prevents the applicant from recognizing and seeking to counter the
grounds for rejection.").
We also agree with the Examiner that under step one of the
framework set forth in Mayo/Alice, the claimed invention is directed broadly
to the concept of "'determining one or more projected outcomes"' (Final
Act. 8; see also Ans. 22), and similar to certain methods of organizing
human activities that our reviewing court has found patent ineligible, such as
"unpatentable mental processes" including "steps [that] can be performed in
the human mind, or by a human using a pen and paper" in CyberSource
Corp. v. Retail Decisions, Inc. 654 F.3d 1366, 1372-73 (Fed. Cir. 2011), and
the concept of collecting information, analyzing it, and displaying certain
results of the collection and analysis in Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
In making this determination, we note that the present invention is
described as an "analysis tool for use in the real estate industry that provides
consistent, transparent, and efficient analysis of a real estate development
project" (Spec. i-f 2). The Specification discloses that "the performance of
real estate transactions and development may not be based on insider
knowledge or trade secrets but rather on the ability to have awareness of and
to deftly manipulate a finite set of inputs and data in the most advantageous
way in order to optimize project returns" (id. i-f 10). Further, the
Specification acknowledges that "software products can provide a user with
real estate development project modeling tools that can perform a series of
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calculations based on a wide array of user inputs" (id. i-f 11 ), and identifies
that many of these software products "can lead to inaccuracies based on user
errors that can result in 'garbage in, garbage out"' and require highly skilled
users (id.). To address these deficiencies, the present invention
allow[s] users to manually input assumptions as real-world data
become[] available, replacing calculated assumptions and
reflecting the iterative process of real estate development. The
changes to project assumptions can be logged and can allow the
user to monitor any fluctuation in the value of the real estate
development project over time, as the information transitions
from assumption to hard data and as real-time data is updated. A
range of anticipated project outcomes can be executed through a
Monte Carlo simulation that takes into account a random
sampling of variable parameters to yield a distribution of
projected returns. The integration of real-time data with a
statistically significant financial model with change tracking can
provide a transparent, consistent, and accurate baseline from
which to analyze a project
(id. ,-r 14).
Independent claim 1 recites "[a] computer-implemented method
comprising" the steps of "providing a user interface," "receiving ... first
user-input from a first user," "determining one or more projected outcomes,"
and "generating, an analysis of each of the one or more projected outcomes"
by "identifying a boundary of a parcel," "determining maximum size data,"
"generating an external shape of the building," "and generating the first
rendering from the external shape." The method includes additional steps
for "receiving second user-input," "generating a second rendering from the
second user-input and the first rendering," and "providing ... the second
rendering of the building." Thus, independent claim 1 involves collecting
data and information through the user interface, analyzing the collected data,
and displaying certain results of the collection and analysis through the user
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interface, without any particular inventive technology. Cf Elec. Power
Grp., 830 F.3d at 1354.
We are also unpersuaded by Appellants' contention that the claimed
invention "is rooted in computer technology in order to overcome a problem
and is inherently tied to a computer-related activity" based on the limitation
"'generating a first rendering of a building of the development project"'
(Appeal Br. 7). At the outset, we note that the claimed invention does not
address a problem unique to the Internet or computer networks. Cf
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1371 (Fed. Cir. 2015) (explaining that the "claims here do not address
problems unique to the Internet, so DDR has no applicability"). Here, the
Specification discloses that the invention determines projected outcomes by
plugging "manually input" data into a well-known randomized algorithm
(Spec. i-f 14) using a "'computing system"' which "encompasses all
apparatus, devices, and machines for processing data" (id. i-f 110). As such,
the focus of independent claim 1 is not on any technological advancement,
but rather on the implementation of the abstract idea, "for which computers
are invoked merely as a tool." See Enfzsh, 822 F.3d at 1336.
Turning to the second step of the Mayo/Alice framework, rather than
reciting additional elements that amount to "significantly more" than the
abstract idea, exemplary independent claim 1, at best, adds only "a user
interface," i.e., "a client computer having a graphical user interface or a Web
browser through which a user may interact with an implementation" (see,
e.g., Spec. i-f 115), which lacks an inventive concept. Although the steps of
independent claim 1 may be "tied to a computer-related activity" (Appeal
Br. 7), that is not sufficient by itself to transform the abstract idea into
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patent-eligible subject matter. See, e.g., DDR Holdings, 773 F.3d at 1256
(internal quotation marks omitted) ("[A ]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an
otherwise ineligible claim patent-eligible. . . . The bare fact that a computer
exists in the physical rather than purely conceptual realm 'is beside the
point."').
And, similar to Electric Power, we are not apprised of anything other
than off-the-shelf, conventional computer and display technology for
gathering, analyzing, and presenting the desired information to remove the
claim from the class of subject matter ineligible for patenting. As the court
explained in Electric Power, "merely selecting information, by content or
source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes, whose implicit
exclusion from § 101 undergirds the information-based category of abstract
ideas." Elec. Power Grp., 830 F.3d at 1355.
We also are not persuaded of Examiner error by Appellants' argument
that the claims are not directed to an abstract idea because the Examiner
"fails to show that the specific combination of features recited by the claims
will 'disproportionately [tie] up the use of the underlying idea,' thereby
preempting all applications of the abstract idea" (Appeal Br. 6 (citing Alice,
134 S. Ct. at 2355)).
The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to
patentability. Alice, 134 S. Ct. at 2354 ("We have described the
concern that drives this exclusionary principle as one of pre-
emption[.]"). For this reason, questions on preemption are
inherent in and resolved by the§ 101 analysis.
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Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015). Preemption concerns are, thus, fully addressed and
rendered moot where a claim is determined to disclose patent ineligible
subject matter under the two-part framework described in Mayo and Alice.
Although "preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility"
(id.).
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 101 of independent claim 1, and claims 4, 8, 9, 12-14, 17, 18,
20, and 25-33, which fall with independent claim 1.
Written Description
In rejecting claims 1, 4, 8, 9, 12-14, 17, 18, 20, and 25-33 under
35 U.S.C. § 112(a), the Examiner finds that there is no written description
support in the Specification for "a 'second user' and 'second user input,"' as
recited in claims 1, 9, 17, 25, 27, and 30 (Final Act. 6). More particularly,
the Examiner acknowledges that paragraphs 99 and 104 of the Specification
disclose "interfacing with other users" (Ans. 20), but finds that the cited
portions "do[] not disclose a second user inputting data to generate a second
rendering and do[] not disclose that a second user is even inputting data.
Interfacing with a user can be allowing a user to view data and does not
require a user to input data" (id.).
Appellants maintain that the rejection is improper because the terms
"'second user' and 'second user input' [are] disclosed in at least paragraphs
[0086], [0090]-[0099], and [0104] of the [S]pecification" (see Appeal Br.
5).
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Whether a Specification complies with the written description
requirement of 35 U.S.C. § 112, first paragraph, is a question of fact and is
assessed on a case-by-case basis. See, e.g., Purdue Pharma L.P. v.
Paulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citing Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)). The disclosure, as
originally filed, need not literally describe the claimed subject matter (i.e.,
using the same terms or in haec verba) in order to satisfy the written
description requirement. But the Specification must convey with reasonable
clarity to those skilled in the art that, as of the filing date, Appellants were in
possession of the claimed invention. See id.
Here, as Appellants point out, the Specification discloses
[t]he mobile user interface can allow users (e.g., project team
members) to take the CREAT into the field and update project
assumptions in real time. When the user makes an adjustment to
an assumption using the mobile user interface, those changes are
similarly logged and reflected in the analytic package in real
time. In this way, changes that users make in the field are
instantly reflected and viewable by other team members who
have access to the project analytics
(Appeal Br. 5 (citing Spec. i-f 99)). Thus, we agree with Appellants that a
person of ordinary skill in the art would reasonably understand from the
Specification, as originally filed, that the Specification provides support for
the claim terms "second-user input" and "second user" as recited by claims
1, 9, 17, 25, 27, and 30, at the time the application was filed, given that the
Specification describes multiple users can update project assumptions in real
time.
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Therefore, we do not sustain the Examiner's rejection of claims 1, 4,
8, 9, 12-14, 17, 18, 20, and 25-33, under 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement.
Obviousness
Independent claims 1, 9, and 17, and dependent claims 8, 13, 14, 18, 28, 29,
and 31-33
We are not persuaded by Appellants' argument that the Examiner
erred in rejecting independent claims 1, 9, and 17 under 35 U.S.C. § 103(a)
because Sigaty does not disclose or suggest "identifying a boundary of a
parcel for the building based on the location and the zoning regulations data,
where the boundary is positioned with respect to a public street," as recited
by limitation [ e] of independent claim 1 (see Appeal Br. 7-8), and similarly
recited by independent claims 9 and 17 (see id. at 13). Instead, we agree
with the Examiner that Sigaty discloses the argued limitations (see Final
Act. 11-14 (citing Sigaty i-fi-14, 40, 41, 47, 58, Fig. 10); see also Ans. 24
(citing Sigaty i-fi-133, 41, Figs. 3, 10, 14)).
We find that Sigaty is directed to "a computer-based system for 3-D
massing of a building envelope" (Sigaty i1 4 ). Sigaty discloses that its
system
receive[ s] a property address, obtain[ s] data from the database
based on the address, convert[ s] the address to a parcel identifier
identifying a parcel, display[ s] a land area diagram including the
parcel, determine[ s] a floor area allowance value for the parcel,
calculate[ s] a lot coverage amount for the parcel, calculate[ s] a
rear yard requirement amount for the parcel, determine[ s] a
priority between the lot coverage amount and the rear yard
requirement, calculate[ s] a rear yard line based on the priority,
calculate[ s] a building envelope for the parcel, calculate[ s] a
floor area ratio for the parcel, and calculate[ s] an investment
viability value for the parcel
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(id.). Sigaty further discloses that "[i]n order to identify the areas on a
parcel where zoning conditions are met, each zoning parameter must be
digitized so that the geometric area of the parcel can be determined" (id.
i-f 41 ). In one example, Sigaty discloses "there are two types of streets by
zone: wide streets and narrow streets. Wide and narrow streets allow
different setbacks, which can be defined as a distance between a building's
street-facing wall and the front edge of the lot" (id. i-f 47). Sigaty also
discloses that "system 100 then compiles the parameters and zoning code
information and places the data into the zone database 112. This allows the
system 100 to access all of the zoning code information in response to a user
entering the address of a site" (id. i-f 5 8).
We also are not persuaded by Appellants' argument that Sigaty fails
to disclose or suggest the argued limitations because "the setback distance
[in Sigaty] is defined inside a boundary of the parcel and does not define the
boundary itself' (Appeal Br. 8). Instead, we find that Sigaty discloses
"identifying a boundary of a parcel ... positioned with respect to a public
street" (see Sigaty i-fi-14, 47, 58). That is, Sigaty discloses that its system
displays a land area diagram of a parcel that takes into account "all of the
zoning code information in response to a user entering the address of a site"
(id. i-f 58; see also id. i-f 4). Here, we note that the Examiner's interpretation
of "boundary," as identified in Sigaty, is reasonable and consistent with
Appellants' Specification which discloses that "[ w ]ithin the boundaries of
the selected parcels, the CREAT can assume that the structure can be
positioned as close to the busiest (based on traffic counts) public street
fronting the project as possible while still adhering to the zoning-mandated
setback requirements" (Spec. i-f 86).
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In view of the foregoing, we sustain the Examiner's rejection of
independent claims 1, 9, and 17 under 35 U.S.C. § 103(a). We also sustain
the Examiner's rejections of claims 8, 13, 14, 18, 28, 29, and 31-33, which
are not separately argued.
Dependent claims 4, 12, and 20
Each of claims 4, 12, and 20 recites "wherein determining one or
more projected outcomes for the development project comprises executing a
simulation that randomly samples outcomes from a probability distribution
of projected outcomes."
Appellants argue that Ponce de Leon fails to disclose this limitation
because
Ponce de Leon uses "input values selected at random
from ... possible durations ... to calculate the distribution of
possible completion dates." In contrast, claim 4 recites
"randomly [sampling] outcomes from a probability distribution
of projected outcomes" to "[determine] one or more projected
outcomes [based on data for the specified type, location,
zoning regulations data, and land use data]" ... as recited in
claim 4
(Appeal Br. 9). However, Appellants' argument is not persuasive at least
because claims 4, 12, and 20 are rejected as unpatentable over the
combination of Bleakley, Sigaty, and Ponce de Leon, and not over Ponce de
Leon alone. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir.
1986) ("Non-obviousness cannot be established by attacking references
individually where the rejection is based upon the teachings of a
combination of references.").
Here, the Examiner relies on a combination of Bleakley, Sigaty, and
Ponce de Leon, not Ponce de Leon alone, as disclosing the argued limitation
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(see Final Act. 19-20; see also Ans. 24--25). More particularly, the
Examiner relies on Ponce de Leon, as discussed above, to disclose
"determining one or more projected outcomes for the development project
comprises executing a simulation that randomly samples outcomes from a
probability distribution of projected outcomes" (Ans. 25 (citing Ponce de
Leon i-fi-192, 177)), but relies on Bleakley and Sigaty for the specific type of
data required by claims 4, 12, and 20 (id.).
In view of the foregoing, we sustain the Examiner's rejection of
claims 4, 12, and 20 under 35 U.S.C. § 103(a).
Dependent claims 25, 27, and 30
Claims 25, 27, and 30 recite:
storing the second rendering and the analysis in an analytic
package;
exporting the analytic package to a standardized format for
display in a portal, the portal being an interface for a plurality of
users to access the analysis and analysis of other development
projects;
receiving user-input from a second user that accesses the
analytic package from the user-interface; and
providing the development project for the analytic
package for display at the user-interface.
Appellants argue that Sigaty fails to disclose or suggest this claimed
subject matter because "exporting this 'clean new GIS file"' (Appeal Br. 10)
is not the same as "'exporting the analytic package to a standardized format
for display in a portal, the portal being an interface for a plurality of users to
access the analysis and analysis of other development projects,"' as recited
by claims 25, 27, and 30 (id. 10-11; cf Final Act. 16). However, we agree
with the Examiner that Sigaty discloses the argued subject matter (see Ans.
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25-26 (citing Sigaty, Abs., i-fi-140, 95, Figs. 1, 2); see also Final Act. 15-16
(citing Sigaty i-fi-1 40, 59, 60, 71-73, 95, Figs. 7, 12)). In this regard, we
agree with the Examiner that the "GIS file" and "system 100," disclosed in
Sigaty, constitute an "analytic package" and "portal" (see Sigaty i1 40)
within the meaning of claims 25, 27, and 39, under a broad, but reasonable,
interpretation (see, e.g., Spec. i192).
In view of the foregoing, we sustain the Examiner's rejection of
claims 25, 27, and 30 under 35 U.S.C. § 103(a).
Dependent claim 2 6
Claim 26 recites "where the user-input from the second user
comprises a search query of attributes for a particular development project,
and further comprising: providing, through the user interface, one or more
search results of matching development projects in response to the search
query."
Appellants argue that the combination of Bleakley and Sigaty fails to
disclose or suggests the subject matter of claim 26 because Bleakley does
not disclose or suggest the "search query" is received from, and the "search
results" are provided through, "the user interface [of the portal]" (Appeal Br.
12-13). However, we agree with the Examiner that Bleakley discloses the
argued subject matter (see Ans. 26-27 (citing Bleakley i136); see also Final
Act. 16-17).
In view of the foregoing, we sustain the Examiner's rejection of claim
26 under 35 U.S.C. § 103(a).
17
Appeal2016-005137
Application 13/792,464
DECISION
The Examiner's rejection of claims 1, 4, 8, 9, 12-14, 17, 18, 20, and
25-33 under 35 U.S.C. § 101 is affirmed.
The Examiner's rejection of claims 1, 4, 8, 9, 12-14, 17, 18, 20, and
25-33 under 35 U.S.C. § 112, first paragraph, is reversed.
The Examiner's rejections of claims 1, 4, 8, 9, 12-14, 17, 18, 20, and
25-33 under 35 U.S.C. § 103(a) are 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
18