Ex Parte Pershing

Patent Trial and Appeal Board

Jun 15, 2017

13385606 (P.T.A.B. Jun. 15, 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.
13/385,606 02/03/2012 Chris Pershing 6339.026 2707
30589 7590 06/19/2017
DUNLAP CODDING, P.C.
PO BOX 16370
OKLAHOMA CITY, OK 73113
EXAMINER
KHOLDEBARIN, IMAN K
ART UNIT PAPER NUMBER
2669
NOTIFICATION DATE DELIVERY MODE
06/19/2017 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):
docketing@dunlapcodding.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS PERSHING
Appeal 2017-003546
Application 13/385,606
Technology Center 2600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-003546
Application 13/385,606
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—31. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Exemplary Claim
Exemplary claim 1 under appeal reads as follows:
1. A computing system for generating estimated wall area
measurements, the computing system comprising:
at least one computer processor; and
a memory coupled to the at least one computer processor,
the memory having computer executable instructions stored on
the memory, that, when executed, cause the at least one computer
processor to:
receive roof measurements of a building having a roof;
receive one or more measurements indicative of one or
more distances between one or more reference points on the roof
and a ground surface on which the building rests;
generate, based at least in part on the received roof
measurements and the received one or more measurements
indicative of the one or more distances between the one or more
reference points on the roof and the ground surface, an estimated
wall area measurement of the building; and
output a wall area measurement estimate report having the
estimated wall area measurement of the building thereon,
wherein the generated wall estimation report is provided for
repair and/or constructing a structure of the building.
Rejections on Appeal
1. The Examiner rejected claims 1—31 under 35 U.S.C. § 101 as
failing to recite patent-eligible subject matter.
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Application 13/385,606
2. The Examiner rejected claims 1—5, 8—10, 13—16, 28, and 29 under
35 U.S.C. § 103(a) as being unpatentable over the combination of
Brolafountaine, Generating Exterior Walls From Roofs in Sketch (Part I) —
Xactimate 27, Internet Archive Wayback Machine (March 9, 2015),
(https://web.archive.Org/web/20150309011317/http://www.screenr.com/Ok
N (http://www.screenr.com/OkN)) (herein “Brolafountaine”) and Kathryn
Hatter, How do I Figure Square Footage for Painting the Outside of a
House? SFGATE, 1—3 (http://homeguides.sfgate.com/figure-square-footage-
painting-outside-house-8721.html) (last visited April 30, 2015) (“herein
“Hatter”).
3. The Examiner rejected claims 6, 7, 11, and 17 under
35 U.S.C. § 103(a) as being unpatentable over the combination of
Brolafountaine, Hatter, and Hoguet (US 2009/0160856 Al; published June
25, 2009).
4. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Brolafountaine, Hatter, and Pershing
(US 2009/0132436 Al; published May 21, 2009).
5. The Examiner rejected claims 18—27, 30, and 31 under
35 U.S.C. § 103(a) as being unpatentable over the combination of Pershing,
Brolafountaine, and Hatter.
Appellant’s Contentions
1. Appellant contends that the Examiner erred in rejecting claims 1—
31 under 35 U.S.C. § 101 because:
The Examiner has not even identified the alleged abstract idea
of “estimating wall area” as a fundamental economic practice,
a certain method of organizing human activity, or an idea “of
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Application 13/385,606
itself’. The Office has also failed to provide any reasons at all
why it would fall under one of these examples. For at least this
reason, the Office has provided no support in making this
allegation and thus fails to establish a prima facie case that the
claims are for an abstract idea.
Furthermore, the claims are not directed to merely
“estimating wall area”. The Examiner insisting that all the
claims are directed to merely “estimating wall area” incorrectly
describes the claims at such a high level of abstraction and
untethered from the language of the claims such that it ensures
that the exceptions to § 101 swallow the rule. In Enfish v.
Microsoft Corp., ... the Federal Circuit., disagreeing with the
characterization of the patent claims by the lower court as merely
directed to an alleged abstract idea of “storing, organizing, and
retrieving memory in a logical table”, concluded that “describing
the claims at such a high level of abstraction and untethered from
the language of the claims all but ensures that the exceptions to
§ 101 swallow the rule”. ... As the claims in Enfish improve
computerized database processes, the claims in the present case
improve the technological process of computerized building
estimation, which is not abstract.
Even if the claims were directly to an alleged abstract idea
of “estimating wall area”, they include additional elements that
when considered in combination make each claim as a whole
amount to significantly more than “estimating wall area” itself.
As can be seen from the additional limitations in the claims,
claims 1-31 are each directed to a specific way of estimating wall
area, which is significantly more than just “estimating wall
area”. . . .
. . . [T]he claims certainly do not recite the only possible
method of estimating wall area. . . . Thus, if granted, the claims
would not result in a monopoly on the idea of estimating wall
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Application 13/385,606
area. Accordingly, the claims are not directed to a building block
of the modem economy or human ingenuity, and pose no risk of
pre-empting estimating wall area in all possible fields.
App. Br. 20-24 (Appellant’s emphasis and citations omitted, panel’s
emphasis added); see also App. Br. 25^42; Reply Br. 2—10.
2. Appellant also contends that the Examiner erred in rejecting claims
1—31 under 35 U.S.C. § 103(a) because:
The rejections under 35 US C103 are all flawed due to
the Examiner’s erroneous reliance on Brolafountaine as if it
were a prior art reference. The Examiner has failed to show
this reference qualifies as prior art. The reference is a video
posted to the web site www.screenr com, which provides no
indication of the year it first was posted. Based on printouts from
the web archive Wayback Machine, the Examiner alleges this
reference was posted on or before January 17, 2011. This is
incorrect. The printout from the Wayback Machine web site
provided by the Examiner showing this date is for a completely
different video. The link to the Brolafountaine video is
http://www.screenr.com/OkN. Note the web address has a
capital “O”. However, as shown on the top of page 3 of the .pdf
document provided by the Examiner, the link provided by the
Wayback Machine is http://www.screenr.com/okN with a lower
case “o”. Going to http://www.screenr.com/okN (with a lower
case “o”) brings up a completely different video about contact
management software. Not all web page links are case sensitive,
but the links to screener.com videos are case sensitive and the
Wayback Machine apparently does not recognize this and thus
provides the wrong screenr.com video when a query is made.
As further evidence that the printout from the Wayback
Machine web site provided by the Examiner showing the
January 17, 2011, date is for a completely different video, not
only is the link not the same, the title is completely different,
and the user name of the person who posted the video is
different. In particular, the video on the Wayback machine has
the title “LESS.js has changed my life” which clearly is not
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Application 13/385,606
“Generating exterior walls from roofs in Sketch (Part 1) -
Xactimate 27” and was posted by a different user having a
username “brianegan”.
App. Br. 42-43 (Appellant’s emphasis and citations omitted, panel’s
emphasis added); see also Reply Br. 10—14.
Issues on Appeal
Did the Examiner err in rejecting claims 1—31 as failing to recite patent-
eligible subject matter?
Did the Examiner err in rejecting claims 1—31 as being obvious?
ANALYSIS
Rejection under § 101
As to Appellant’s contention 1, we are not persuaded the Examiner
erred. In Alice Corp. Pty. Ltd. v. CLS BankInt’l, 134 S. Ct. 2347 (2014), the
Supreme Court articulated the required analysis for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas (which are
not patent eligible under 35 U.S.C. § 101) from patents that claim patent-
eligible applications of these concepts. Alice Corp., 134 S. Ct. at 2355. The
first step in the analysis is to determine whether the claims at issue are
directed to a patent-ineligible concept, such as an abstract idea. Id. If the
claims are directed to a patent-ineligible concept, then the second step in the
analysis 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.
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With respect to the first step in the analysis, we agree with the
Examiner that the claims are directed to estimating an area of a wall, which
is a purely mental process that can either be done within the mind or using
pen and paper, and, thus, is an abstract idea. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011); see also
Synopsys v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir.
2016). Appellant’s argument that the claims are similar to the claims in
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) or the
claims in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299
(Fed. Cir. 2016) because the claims improve the technological process of
computerized building estimation is not persuasive. Unlike the claims in
Enfish and McRO, the claims in the present application fail to recite the
technical details that describe the alleged improvement of the technical
process of computerized building estimation. Instead, the claims merely
recite the abstract idea of estimating a wall area along with generic computer
terminology (e.g., “computer processor” “memory,” etc.). Thus, the claims
are merely directed to the automation of manually measuring an area of a
wall described in Appellant’s Specification (see, e.g., Spec. 1:12—15) using a
generic computer. Such an “improvement” is not a patentable improvement
in computer technology.
With respect to the second step in the analysis, we agree with the
Examiner that the claims do not recite any additional elements, either
considered individually or in combination, that make the claims as a whole
amount to significantly more than the abstract idea of estimating a wall area.
Although Appellant recites various claim elements of various claims (see,
e.g., App. Br. 22), Appellant does not explain how the recited claim
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Application 13/385,606
elements transform the claims from an abstract idea into patent-eligible
subject matter. Further, the cited claim elements (e.g., “building having a
roof’ “measurements indicative of. . . distances between . . . reference
points on the roof and a ground surface on which the building rests,” “wall
area measurement. . . report having the estimated wall area measurement,”
and “provided for repair and/or constructing a structure of the building”)
merely describe well-understood, routine, and conventional concepts and
activities previously known in the field of building measurements.
Regarding Appellant’s argument that claims do not preempt all
methods of estimating a wall area, this argument is not persuasive, as the
Federal Circuit has made clear that “the absence of complete preemption
does not demonstrate patent eligibility” of a claim. Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). We have
considered Appellant’s other arguments regarding the patent-eligibility of
the claims (see App. Br. 25—42), and we are not persuaded by them either.
Accordingly, we sustain the rejection of claims 1—31 under 35 U.S.C. § 101.
Rejection under § 103
As to Appellant’s contention 2, we are persuaded the Examiner erred.
We agree with Appellant that the web archive “Internet Archive Wayback
Machine” shows that the earliest indexed capture of the Brolafountaine
reference is actually dated March 9, 2015, which is after the effective filing
date of the present application (i.e., February 3, 2012). All earlier captures
that are indexed using the index “http://www/screenr.com/OkN” (including
the indexed capture dated January 17, 2011) are captures of a different
video, as evidenced by the different title and different user name. This is
illustrated in the following screenshots reproduced below, where the first
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screenshot is a screenshot of the indexed capture dated March 9, 2015, and
the second screenshot is a screenshot of the indexed capture dated January
17, 2011:
First screenshot of the indexed capture (dated March 9, 2015) and the second
screenshot of the indexed capture (dated January 17, 2011).
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Thus, we conclude that the Examiner has failed to show that the
Brolafountaine reference was available as prior art under 35 U.S.C.
§ 103(a).1 Accordingly, we do not sustain the rejections of claims 1—31
under 35 U.S.C. § 103(a).
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1—31 as failing to
recite patent-eligible subject matter under 35 U.S.C. § 101.
(2) Appellant has established that the Examiner erred in rejecting
claims 1—31 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1—31 are not patentable.
DECISION
We affirm the Examiner’s rejection of claims 1—31 as failing to recite
patent-eligible subject matter under 35 U.S.C. § 101.
We reverse the Examiner’s rejections of claims 1—31 as being
unpatentable under 35 U.S.C. § 103(a).
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
1 We note that manuals of the “Xactimate 27” software product described in
Brolafountaine appear to be available online at
https://www.xactware.eom/en-us/solutions/claims-estimating/weleome/#.
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