Ex Parte Seid

Patent Trials and Appeals Board

Jan 17, 2019

13841634 - (D) (P.T.A.B. Jan. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/841,634 03/15/2013
30554 7590
MAHAMEDI IP LAW LLP
910 Campisi Way, Suite IE
Suite 600
Campbell, CA 95008
01/22/2019
FIRST NAMED INVENTOR
Jake Seid
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.
AUCT.P003 2577
EXAMINER
CIVAN,ETHAND
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
01/22/2019 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):
uspto@m-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAKE SEID 1
Appeal2017-009988 2
Application 13/841,634
Technology Center 3600
Before JAMES B. ARPIN, HUNG H. BUI, and MICHAEL J. ENGLE,
Administrative Patent Judges.
ARPIN, Administrative Patent Judge.
I. DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a), the Examiner's decision
rejecting claims 1-26, which constitute all of the claims pending in this
application. Final Act. 2; App. Br. 3. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 According to Appellant, Ten-X, LLC is the real party-in-interest. App.
Br. 32.
2 In this Decision, we refer to Appellant's Appeal Brief ("App. Br.," filed
March 6, 2017), Supplemental Appeal Brief ("Supp. App. Br.," filed April 6,
2017), and Reply Brief ("Reply Br.," filed July 18, 2017); the Final Office
Action ("Final Act.," mailed June 3, 2016); the Examiner's Answer ("Ans.,"
mailed May 18, 2017); and the originally filed Specification ("Spec.," filed
March 15, 2013).
Appeal2017-009988
Application 13/841,634
II. STATEMENT OF THE CASE
The recited methods relate to the valuation of a property sold in online
markets, and more specifically, to methods for determining valuation of a
property using price elasticity information or an alternative probable
valuation. Spec. ,r,r 1, 14, 15; see Supp. App. Br. 2, 4, 6-7 (Claims App'x
(Claims 1, 10, and 20)). In particular, the Specification explains that:
In another embodiment, a set of comparable transactions
are determined for items that are comparable to a subject item
receiving the valuation ( e.g., comparable real property). For
each comparable transaction, one or more unsuccessful offers
are identified, and an alternative probable valuation is
determined for the corresponding item of that transaction based
at least in part on the one or more unsuccessful offers. The
valuation for the particular item can be based at least in part on
the determined alternative probable valuation of each
comparable transaction.
In another embodiment, a candidate set of comparable
transactions are identified. Each comparable transaction of the
candidate set can be for a corresponding item that is deemed
similar to the particular item. For each comparable transaction
of the candidate set, an elasticity is determined in the transaction
price of that comparable transaction, based at least in part on a
comparison between the transaction price and one or more
unsuccessful offers of the comparable transaction. The
comparable transactions of the candidate set are identified in
which the comparison between the transaction price and the
unsuccessful bids exceeds an elasticity threshold. The valuation
of the item is determined based at least in part on weighting down
or eliminating the comparable transactions that exceed the
elasticity threshold.
Spec. ,r,r 14, 15 ( emphases added).
As noted above, claims 1-26 are pending. Claims 1, 10, 20, and 22
are independent. Supp. App. Br. 2, 4, 6-8 (Claims App'x). Claims 2-9
2
Appeal2017-009988
Application 13/841,634
depend directly or indirectly from claim 1, claims 11-19 depend directly
from claim 10, claim 21 depends from claim 20, and claims 23-26 depend
directly or indirectly from claim 22. Id. at 2-8.
Claim 1, reproduced below, is illustrative.
Id. at 2.
1. A method for determining a valuation of a subject item,
the method being implemented by one or more processors
and comprising:
analyzing a listing of a subject item to determine a set of
characteristics for the subject item;
determining, based at least in part on data retrieved from a
third party online source via a network connection,
comparable criteria for the subject item based on the set of
characteristics;
determining multiple comparable transactions conducted
through an online marketplace, based at least in part on a
search of a transaction log of the online marketplace using
the comparable criteria; and
calculating the valuation for the subject item based on the
multiple comparable transactions, wherein calculating the
valuation includes providing an indicator of valuation
elasticity based on a set of unsuccessful offers recorded in
the transaction log of one or more of the comparable
transactions.
3
Appeal2017-009988
Application 13/841,634
III. REFERENCES
The Examiner relies upon the following prior art in rejecting the
pending claims:
Name Pat./Publ. No. Issue/Pub 1. Filing Date
Date
Danzan US 2008/0235125 Al Sep.25,2008 Mar. 19,2007
("Danzan")
Davis US 8,108,264 B 1 Jan. 31, 2012 Jun. 15,2006
("Davis")
Lebaric et al. US 2003/0229552 Al Dec. 11, 2003 Jun. 5,2002
("Lebaric")
IV. THE REJECTIONS
(1) Claims 1-26 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to an abstract idea without significantly more.
Ans. 2-3.
(2) Claims 1, 3-5, 7-10, 12, 14, and 17-26 stand rejected under 35
U.S.C. § 102(b) as anticipated by Danzan. Id. at 4--12.
(3) Claims 2 and 6 stand rejected under 35 U.S.C. § I03(a) as
rendered obvious over the combined teachings of Danzan and Lebaric. Id. at
12-14.
(4) Claims 11 and 13 stand rejected under 35 U.S.C. § I03(a) as
rendered obvious over the teachings of Danzan. Id. at 14--15.
(5) Claims 15 and 16 stand rejected under 35 U.S.C. § I03(a) as
rendered obvious over the combined teachings of Danzan and Davis. Id. at
15-16.
4
Appeal2017-009988
Application 13/841,634
V. DISCUSSION
Unless otherwise indicated, we adopt the Examiner's findings in the
Answer as our own and add any additional findings of fact appearing below
for emphasis. We address these rejections below.
A. Patent Ineligible Subject Matter
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The U.S. Supreme Court has "'long held
that this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable."' Alice Corp. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The Court
in Alice reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 75-
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, 134 S. Ct. at 2355. The first step in
that analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id.
The Court acknowledged in Mayo "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 method or means that improves the relevant
technology or are directed instead to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
5
Appeal2017-009988
Application 13/841,634
See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir.
2016). If the claims are not directed to an abstract idea, the inquiry ends. Id.
at 1339. Otherwise, the inquiry proceeds to the second step where the
elements of the claims are considered "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct.
at 2355 (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 upon the [ineligible concept] itself."' Id.
(quoting Mayo, 566 U.S. at 72-73 (emphasis added)).
1. Statutory Categories
Initially, we conclude that each of the pending claims is directed to a
method. Supp. App. Br. 2-8. Thus, each of the pending claims is directed
to a statutory category of invention, i.e., a "process." 35 U.S.C. § 101; see
35 U.S.C. § lOO(b) ("The term 'process' means process, art, or method, and
includes a new use of a known process, machine, manufacture, composition
of matter, or material." (emphasis added)); 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019); MPEP
§§ 2106(I), 2106.03. 3
2. Alice Step One
With regard to the first step of the Alice analysis, the Examiner
determines that "[ c ]laims 1-26 are directed to the series of steps directed to
3 All MPEP citations herein are to MPEP Rev. 08.2017, January 2018.
6
Appeal2017-009988
Application 13/841,634
instructing how to value a subject item, which is a fundamental economic
practice, and hence, an abstract idea" (Final Act. 2-3), i.e., "certain methods
of organizing human activity', describing concepts relating to interpersonal
and intrapersonal activities such as managing relationships or transactions
between people, social activities, and human behavior, satisfying or avoiding
a legal obligation, advertising, marketing, and sales activities, and managing
human mental activity" (Ans. 18). See Ans. 2, 17; see also 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. at 51 (identifying
"[ c ]ertain methods of organizing human activity" as a category of abstract
ideas). Accepting claim 1 as illustrative, the Examiner considers each of the
limitations of claim 1 in justifying the identification of the abstract idea.
Final Act. 3; see Ans. 2-3, 17-18. Further, the Examiner determines that,
although the claims recite the use of processors and computer networks, the
recited methods can be performed without the aid of such devices, for
example, using pen and paper. Final Act. 3 ("The method can be performed
with or without the assistance of a computer"); Ans. 22 ("The claim does
recite retrieving data from the Internet; however, the data could just as easily
be retrieved utilizing other means, such as the postal service and pre-
computer paper files."). In addition, the Examiner determines that the
identified abstract idea is similar to other abstract ideas previously identified
by the courts. Final Act. 3; Ans. 3, 18. In particular, the Examiner
determines:
The method is similar to "certain methods of organizing
human activity", describing concepts relating to interpersonal
and intrapersonal activities such as managing relationships or
transactions between people, social activities, and human
behavior, satisfying or avoiding a legal obligation, advertising,
marketing, and sales activities, and managing human mental
7
Appeal2017-009988
Application 13/841,634
activity. For example, in Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S.Ct. 2347, 2360 (2014) (performing repetitive calculations)
and Bancorp Services v. Sun Life, 687 F.3d 1266, 1278 (Fed. Cir.
2012) (receiving, processing, and storing data), the claims were
held to be directed to abstract ideas. The present claims are
directed to using comparable criteria and performing repetitive
calculations using transaction logs to calculate valuations. That
is similar to the abstract idea in Alice. Moreover, the steps of
receiving, processing, and storing data in the present claims are
similar to Bancorp Services.
Valuing a subject item is also a fundamental economic
practice fundamental to the economy similar to other practices
that have been found to be directed to abstract ideas, such as
mitigating settlement risk, Alice Corporation Pty. Ltd. v. CLS
Bank International, et al., 573 U.S. _ (2014), and hedging,
Bilski v. Kappas, 561 U.S. 593 (2010). Therefore, the claims are
directed to an abstract idea (Step 2A: YES).
Ans. 18. Thus, the Examiner determines that the pending claims are directed
to an abstract idea.
3. Alice Step Two
With regard to the second step of the Alice analysis, the Examiner
determines that the claims recite only generic hardware and software
elements, namely, "processors," a "third party online source," an "online
marketplace," and "network connections." Final Act. 3--4; Ans. 3; Spec.
,r 57 ("Thus, embodiments described are not limited to any specific
combination of hardware circuitry and software."); see Ans. 18-19. The
Examiner further determines:
Ultimately, the claimed machine(s) function solely as an
obvious mechanism to achieve the claimed result, failing to
impart a meaningful limit on the claim scope (see SiRF Tech.,
Inc. v. ITC, 601 F.3d 1319 (Fed. Cir. 2010)). The claims at issue
here do not rise to overriding the routine and conventional
8
Appeal2017-009988
Application 13/841,634
sequence of events ordinarily performed by the computer, nor do
they set forth with any specificity the interactions of the machine
itself. Conversely, the claims are only specific in how the
computer is used to facilitate the abstract idea itself using routine
and conventional operations of the generic machinery, and are
silent as to any detail or property that would transform the
otherwise generic machinery into a specialized or special
purpose machine.
Ans. 19--20.
After considering the limitations of the pending claims, the Examiner
determines that "[ e Jach of these elements separately and in combination
does not amount to significantly more than the judicial exception because
they would be utilized in a conventional computer implementation of the
abstract idea. The processors provide computing functions. The network
connection and online capabilities provide communication functions." Final
Act. 4; Ans. 3.
4. Appellant's Eligibility Contentions
Appellant contends that the pending claims are not directed to an
abstract idea and, even if found to be so directed, when the recited
limitations are considered as an ordered combination, the recited methods
amount to significantly more than an abstract idea. App. Br. 8-13; Reply
Br. 3-5. For the reasons set forth below, we disagree.
Appellant contends that the pending claims are not directed to an
abstract idea for at least three reasons. App. Br. 8-11. Appellant focuses its
contentions on the recitations of independent claim 1, but we agree that
those contentions are similarly applicable to the other pending claims. See
id. at 12-13.
9
Appeal2017-009988
Application 13/841,634
First, Appellant contends that the Examiner overgeneralizes the focus
of the recited methods in determining them directed to an abstract idea. Id.
at 8. In particular, Appellant argues that the Examiner makes the
determination "untethered from the claim language and ignores the
requirements of the individual limitations/steps of the claims fails to
consider the individual steps." Id. (citing McRO, Inc. v. Bandai Namco
Games Am., Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016)); see Reply Br. 3--4.
However, Appellant's arguments are not persuasive because the
Examiner clearly considered the individual limitations of the pending claims
in determining that the recited methods are directed to an abstract idea.
Final Act. 2-3; Ans. 2-3, 17-18, 21. In particular, we agree with the
Examiner that the abstract idea ("the series of steps instructing how to value
a subject item") utilizes the following claim limitations: (1) "analyzing a
listing of a subject item to determine a set of characteristics for the subject
item"; (2) "determining, based at least in part on data retrieved from a third
party ... source via a ... comparable criteria for the subject item based on
the set of characteristics"; (3) "determining multiple comparable transactions
conducted through an ... marketplace, based at least in part on a search of a
transaction log of the ... marketplace using the comparable criteria"; and
(4) "calculating the valuation for the subject item based on the multiple
comparable transactions, wherein calculating the valuation includes
providing an indicator of valuation elasticity based on a set of unsuccessful
offers recorded in the transaction log of one or more of the comparable
transactions." Ans. 17-18. We further agree with the Examiner that the
claimed series of steps instructing how to value a subject item, including
10
Appeal2017-009988
Application 13/841,634
based on unsuccessful offers for comparable transactions, is "a fundamental
economic practice," similar to Alice, 573 U.S. at 219--20, and Bilski, 561
U.S. at 611-12. Ans. 18. Moreover, the level of abstraction at which the
Examiner describes the methods does not change the accuracy of the
Examiner's determination. Apple Inc. v. Ameranth Inc., 842 F.3d 1229,
1240 (Fed. Cir. 2016) ("An abstract idea can generally be described at
different levels of abstraction."). Thus, the Examiner's determination that
the pending claims are directed to an abstract idea adequately takes into
account the requirements of the claim limitations.
Second, Appellant contends that the recited methods are directed to
improvements in computer functionality rather than directed to an abstract
idea. App. Br. 8-9. In particular, Appellant contends "[t]he claims do not
merely recite the practice of valuating an item, and stating 'performed with a
computer', but instead recite meaningful steps that are specific to online
transactions." Id. at 11. Appellant, however, does not identify a problem
with computer functionality or on-line transactions solved by the recited
methods. Spec. ,r,r 1, 9-19; cf Trading Techs. Int'!, Inc. v. CQG, Inc., 675
F. App'x 1001, 1004 (Fed. Cir. 2017) ("The [district] court held that, rather
than reciting 'a mathematical algorithm,' 'a fundamental economic or
longstanding commercial practice,' or 'a challenge in business,' the
challenged patents 'solve problems of prior graphical user interface devices
... in the context of computerized trading[ ] relating to speed, accuracy and
usability."'). Here, the Examiner determined that
the claims [ of the present application] were directed to an
abstract idea similar to performing repetitive calculations and
receiving, processing, and storing data and that the technological
elements were generic elements utilized in a routine and
11
Appeal2017-009988
Application 13/841,634
conventional manner. The examiner submits that this is a finding
that there was no improvement in computer functionality and that
the claims were directed to an abstract idea.
Ans. 21. We agree.
Similarly, Appellant contends that, like the claims in McRO, "[t]he
programmatic determination and use of 'a set of characteristics,'
'comparable criteria,' and 'comparable transactions' is similar to the use of
'rules' in [McRO]. Indeed, their determination and use is what improves the
relevant technology and not the mere use of generic computer technology."
App. Br. 10. Yet, unlike McRO, Appellant fails to show where the pending
claims, as properly construed, are directed to specific rules that improve the
relevant technology. McRO, 837 F.3d at 1314. The programmatic
determinations of identifying a set of characteristics, determining
comparable criteria, and determining comparable transactions are not shown
to be in any way specific to technology. See App. Br. 10; Ans. 21-22.
Third, Appellant argues that the recited methods are not directed to an
abstract idea because the pending claims do not preempt every application of
the abstract idea. App. Br. 9-10. However, this argument is not persuasive
because, although "preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). "Where a patent's claims are deemed only to disclose patent
ineligible subject matter" under the Alice/Mayo framework, "preemption
concerns are fully addressed and made moot." Id.
Here, the pending claims recite an abstract idea, i.e., "[a] method for
determining the valuation of a subject item," rather than the practical
application of the abstract idea. See Supp. App. Br. 2 ( claim 1 ), 4 ( claim
12
Appeal2017-009988
Application 13/841,634
10), 6-7 (claim 20), 7-8 (claim 22). Considering the additional, recited
limitations, individually and as a whole, we determine that no limitation or
limitations applies or uses the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception to a particular
technological environment, e.g., one or more processors linked to a third
party on-line source via a computer network, an on-line marketplace for
subject items, or the Internet, such that the claims as a whole are more than a
drafting effort designed to monopolize the exception. See Ans. 22 ("The
claim does recite retrieving data from the Internet; however, the data could
just as easily be retrieved utilizing other means, such as the postal service
and pre-computer paper files."); 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. at 54--55 ("Prong Two"). We conclude
the pending claims do not integrate the judicial exception into a practical
application. For example, as discussed above, the claims do not improve the
functioning of a computer or other technology, are not applied with any
particular machine, and do not effect a transformation of a particular article
to a different state. See MPEP §§ 2106.05(a}-(c), (e}-(h). Thus, we are not
persuaded that the Examiner improperly determined that the pending claim
are directed to an abstract idea.
Applicant further contends that, even if the pending claims are
directed to an abstract idea, the limitations of the pending claims amount to
significantly more than an abstract idea because the Examiner fails to
consider the limitations of the pending claims as an ordered combination.
App. Br. 11-13.
Undertaking the appropriate analysis, the Board should
find that the claims do amount to "significantly more" than the
alleged abstract idea. Taken individually and in combination, the
13
Appeal2017-009988
Application 13/841,634
claim limitations are unconventional and non-generic, and
embody patent-eligible inventive concepts. For instance, claim
1 requires the use of an "indicator of valuation elasticity based
on a set of unsuccessful offers recorded in the transaction log of
one or more of the comparable transactions." Similarly,
independent claim 20 requires "determining an elasticity in a
transaction price of that comparable transaction based at least in
part on a difference between the transaction price and one or
more unsuccessful offers." Such a concept is neither generic nor
conventional. For instance, the specification explains that
"conventional approaches generally do not account for"
"elasticity factors, such as randomness, or factors that are
inherent and specific to a particular item." [Spec. ,r 11.] And in
particular, "examples described here identify and utilize
unsuccessful offers (e.g., losing bids in an auction) as a
mechanism to determine valuation for an item in a manner that
accounts for the presence of elasticity factors." Id. Accordingly,
limitations of the claims represent non-generic and non-
conventional steps in resolving the issues faced by the inventors.
The Examiner has not shown that these limitations, either
individually or in combination, are merely generic and
conventional.
App. Br. 12-13; see Spec. ,r,r 11, 14, 15. Appellant does not contend that
"price elasticity" or "alternative probable valuation" was an unknown
concept or that their determination based on unsuccessful bids was not
conventional or routine. See Spec. ,r 15; see also Organization for Economic
Co-operation and Development, Glossary of Statistical Terms,
https://stats.oecd.org/glossary/ detail.asp?ID=3206 ("Elasticity of Demand,
Price") (Mar. 4, 2003) ("The price elasticity in demand is defined as the
percentage change in quantity demanded divided by the percentage change
in price.").
Nevertheless, Appellant contends that the use of this known concept
in determining the valuation of a subject item is not generic or conventional.
14
Appeal2017-009988
Application 13/841,634
App. Br. 12-13. For example, Appellant contends that "conventional
approaches" do not account for "elasticity factors, such as randomness, or
factors that are inherent and specific to a particular item." Id. These
"factors," however, are not recited in independent claims 1 or 20, and
independent claims 10 and 22 do not recite determining price "elasticity."
See Supp. App. Br. 2 ( claim 1 ), 4 ( claim 10), 6-7 ( claim 20), 7-8 ( claim 22).
Moreover, as the Federal Circuit explained, "[i]t has been clear since Alice
that a claimed invention's use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention 'significantly
more' than that ineligible concept." BSG Tech LLC v. BuySeasons, Inc., 899
F.3d 1281, 1290 (Fed. Cir. 2018). Thus, we are not persuaded that the
Examiner erred in determining that the recited limitations, individually or as
an ordered combination, do not amount to significantly more than the
identified abstract idea. Final Act. 4; Ans. 3.
The Examiner determined that independent claims 10, 20, and 22
contain limitations similar to those of claim 1 and are similarly ineligible.
Ans. 20. Further, the Examiner determined that dependent claims 2-9, 11-
19, 21, and 23-26 suffer from the same deficiencies as their base claims. Id.
For the reasons above, the Examiner did not err in determining the
recited methods are patent ineligible, and we sustain the Examiner's
rejections under 35 U.S.C. § 101.
B. Lack of Anticipation by Danzan
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros. v. Union Oil Co., 814 F.2d 628,631 (Fed.
Cir. 1987). The elements must be arranged as required by the claim, but this
15
Appeal2017-009988
Application 13/841,634
is not an ipsissimis verbis test. See In re Bond, 910 F.2d 831, 832 (Fed. Cir.
1990). "[U]nless a reference discloses within the four comers of the
document not only all of the limitations claimed but also all of the
limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed, and thus, cannot
anticipate under 35 U.S.C. § 102." Net MoneyIN, Inc. v. VeriSign, Inc., 545
F.3d 1359, 1371 (Fed. Cir. 2008) (emphasis added); accord In re Arkley, 455
F.2d 586 (CCPA 1972).
The Examiner finds Danzan discloses each and every element of
claims 1, 3-5, 7-10, 12, 14, and 17-26. Final Act. 4--12. For the reasons set
forth below, we determine that the Examiner's mapping of the elements of
the pending claims on the disclosure of Danzan is deficient.
1. "analyzing" and "determining . .. comparable criteria" steps
Initially, claim 1 recites
analyzing a listing of a subject item to determine a set of
characteristics for the subject item;
determining, based at least in part on data retrieved from a
third party online source via a network connection, comparable
criteria for the subject item based on the set of characteristics.
Supp. App. Br. 2. Independent claims 10, 20, and 22 recite similar
limitations. Id. at 4 (claim 10), 6 (claim 20), 7 (claim 22). The Examiner
finds that Danzan discloses the "analyzing" step because Danzan discloses
that the "buyer analyzes parameters of properties buyer is bidding on." Final
Act. 4 ( citing Danzan ,r 20). Specifically, referring to Figure 4, Danzan
discloses:
Buyers will then conduct a search 401 for properties that are of
interest. Search parameters would typically include a set of
16
Appeal2017-009988
Application 13/841,634
property descriptors appropriate for the particular market.
Exemplary descriptors that may be searched include property
type, price, and geography (for real estate properties). Once a
property or set of properties is selected, the buyer then defines a
set of parameters 402 under which they would like to make offers
on the properties.
Danzan ,r 20. The Examiner maps the recitation of "a listing of a subject
item" on Danzan' s disclosure of "exemplary descriptors." Ans. 25
("Danzan, [,I 20] discloses a listing comprising the identity of a property and
various descriptors, such as type, price, and geography."). Thus, Danzan's
"descriptors" are used as search terms to identify subject properties. Reply
Br. 6; see App. Br. 14.
The Examiner further finds that Danzan discloses:
Once a property or set of properties is selected, the buyer then
defines a set of parameters 402 under which they would like to
make offers on the properties. Non-limiting exemplary
parameters may include starting bid, maximum bid, bid
increments if automatic bidding is enabled, whether response
bids should in fact be automatic or manual, etc. Each selected
property may have a unique set of bidding parameters.
Danzan ,r 20 ( emphasis added). The Examiner maps the recitation of "a set
of characteristics" on Danzan' s disclosure of "exemplary parameters."
Ans. 26 ("Danzan for example discloses relating bid prices, interest rates,
times, etc. Danzan, [,I 20]. This is an example of a set of characteristics."
(emphasis added)); see id. at 27.
The Examiner alleges "that Danzan teaches that '[b ]uyers search and
analyze listings based on various database parameters."' Reply Br. 7
( quoting Ans. 25). However, as Appellant notes, the claims do not recite
analyzing a listing based on the set of characteristics. Id. Instead, the claims
recite "analyzing a listing of a subject item to determine a set of
17
Appeal2017-009988
Application 13/841,634
characteristics for the subject item." Id.; see Supp. App. Br. 2. Thus, the
Examiner's mapping of the recited limitations on Danzan's disclosure is
flawed.
With respect to the step of "determining ... comparable criteria for
the subject item based on the set of characteristics" (Supp. App. Br. 2), the
Examiner further finds that Danzan discloses that a "buyer defines bidding
parameters for multiple properties, which are comparable properties in that
such properties are the common results of a single search" (Final Act. 5
(citing Danzan ,r 20)). In particular, the Examiner finds "[t]he transactions
are comparable because Danzan, [,I 20] discloses that the buyer selects a set
of search descriptors. The chosen search descriptors will necessarily
generate transaction data comparable to the desired data." Ans. 27-28.
However, the Examiner's reasoning is again flawed.
Similar search parameters should retrieve comparable subject items.
The Examiner finds that the "criteria," i.e., the "bidding parameters," are
comparable because the properties, i.e., subject items, resulting from the
same search are comparable. However, the independent claims recite that
the "comparable criteria" are "based on the set of characteristics," i.e.,
Danzan's "bidding parameters," which may be "unique" to "each selected
property." Danzan ,r 20. Thus, the Examiner fails to show that the
"comparable criteria are based on the set of characteristics."
Because each of independent claims 1, 10, 20, and 22 recites these
"analyzing" and "determining" steps, Danzan fails to anticipate each of these
claims, as well as the rejected claims depending therefrom.
18
Appeal2017-009988
Application 13/841,634
2. "determining multiple comparable transactions ... using the
comparable criteria " step
In addition, claim 1 recites
determining multiple comparable transactions conducted
through an online marketplace, based at least in part on a search
of a transaction log of the online marketplace using the
comparable criteria.
Supp. App. Br. 2. The Examiner finds that Danzan discloses "transaction
log data is used to determine comparable transactions." Final Act. 5 ( citing
Danzan ,r 20). In particular, the Examiner explains, "Appellant argues that
Danzan does not disclose 'based on the set of characteristics'. [App. Br.] 16.
Danzan for example discloses relating bid prices, interest rates, times, etc.
Danzan[ ,r 20]. This is an example of a set of characteristics." Ans. 27.
Danzan further discloses that:
An unacceptable bid will be signaled back to the buyer 407. The
buyer then makes a decision 408 to either continue bidding by
setting new, auction paranleters 402 or to stop bidding on a
particular or all properties. An acceptable bid then continues the
process and bids for all properties from all buyers are completed
404. Conduct bids in the case of the instant invention includes
as exemplary steps: to log all bids, bid history and bid parameters
in a database, compare and rank bids as to highest bid, relate
bids in the buying and selling database to buying parameters and
to selling parameters, relate bids in the buying and selling system
database to the current market data such as date and time, relate
bids in the buying and selling database to external factors such
as interest rates.
Danzan ,r 20 ( emphases added). As Appellant contends, Danzan discloses
comparing bids for a single transaction and relating those bids to the bidding
parameters. App. Br. 16-17; see Spec. ,r 9 ("In many examples described
herein, price elasticity information can be determined in part from
unsuccessful offers received in the course of prior transactions for
19
Appeal2017-009988
Application 13/841,634
comparable items (or comparable transactions)." (emphasis added)).
Further, as noted above, the Examiner finds that Danzan's "bidding
parameters" disclose the recited "comparable criteria." Final Act. 4--5; see
App. Br. 17. However, the Examiner fails to show where Danzan discloses
searching a transaction log using these "bidding parameters" to determine
"comparable transactions." App. Br. 17; Reply Br. 9--10; see Ans. 27-28.
Thus, we agree with Appellant that the Examiner fails to show that Danzan
discloses this element of claim 1.
Because each of independent claims 1, 10, 20, and 22, recites this or a
substantially similar step, the Examiner fails to show Danzan anticipates
each of these claims, as well as the rejected claims depending therefrom.
3. "calculating the valuation" step
Claim 1 also recites
calculating the valuation for the subject item based on the
multiple comparable transactions, wherein calculating the
valuation includes providing an indicator of valuation elasticity
based on a set of unsuccessful offers recorded in the transaction
log of one or more of the comparable transactions.
Supp. App. Br. 2 (emphases added). The Examiner finds that Danzan
discloses, "transaction log data is used to determine elasticity." Final Act. 5
( citing Danzan ,r 20). In particular, the Examiner asserts that
price elasticity is a well[-] known and extremely broad concept.
Simply reciting an indication of price elasticity denotes that the
claim requires some indication of whether one product will be
substituted for another. In the case of real estate, it means
whether one property will be substituted for another. Danzan,
[,I 20] discloses searching, ranking, and bidding on multiple
properties simultaneously and reordering the ranking
substituting one preferred property for another based on the
20
Appeal2017-009988
Application 13/841,634
progress of the auctions. Therefore, Danzan discloses the
concept of price elasticity.
Ans. 28 ( emphases added); see Final Act. 17 ("Applicant argues that Danzan
does not disclose taking into account price elasticity into account after
unsuccessful offers of previous comparable transactions. The examiner
believes that Danzan does so, at least as the concept is currently claimed."
( citation omitted)).
Appellant contends that the Examiner fails to show "where and how
Danzan discloses 'price elasticity."' App. Br. 18; see Reply Br. 10. The
Examiner does not show where Danzan uses the term "elasticity." See App.
Br. 28. Moreover, it is unclear from the Examiner's rejection whether the
Examiner is taking official notice that "price elasticity" is a well-known
concept or whether the Examiner is finding that disclosure of "price
elasticity" is inherent in Danzan's discussion of "unacceptable," i.e.,
unsuccessful, bids. See Ans. 28; Danzan ,r 20 ("An unacceptable bid will be
signaled back to the buyer 407. "); see also Spec. ,r 9 ("[P]rice elasticity
information can be determined in part from unsuccessful offers received in
the course of prior transactions for comparable items (or comparable
transactions)." (emphasis added)). If the former, the Examiner fails
properly to take official notice, and, in the present case, such official notice
would not be sufficient to support an anticipation rejection based on
Danzan. See MPEP § 2144.03. If the latter, the Examiner fails to show that
the disclosure of "price elasticity" is inherent in Danzan. See id. § 2112
("The fact that a certain result or characteristic may occur or be present in
the prior art is not sufficient to establish the inherency of that result or
characteristic.").
21
Appeal2017-009988
Application 13/841,634
Further, claim 1 recites that "calculating the valuation includes
providing an indicator of valuation elasticity."4 Supp. App. Br. 2 ( emphasis
added); see id. at 5 ( claim 14 reciting "an elasticity range"), 8 ( claims 23-26
reciting "an elasticity parameter"); see also id. at 6 ( claim 20 reciting
"elasticity of the transaction price exceeding a threshold"), 7 ( claim 21
reciting that "the elasticity of the transaction price" is less than or greater
than "the designated threshold"). As Appellant correctly contends, the
Examiner fails to show where Danzan discloses "an indicator of valuation
elasticity." App. Br. 18; Reply Br. 10; see Final Act. 5; Ans. 28-29.
Further, in view of the Examiner's failure to show that Danzan discloses
determining price elasticity, we are not persuaded that the Examiner shows
that Danzan discloses the "elasticity range" of claim 14 (Final Act. 8), the
"elasticity parameter" of claims 23-26 (id. at 11-12), or the relationship of
transaction price elasticity to a threshold as recited in claims 20 and 21 (id.
at 9-10).
Because each of independent claims 1 and 20 recites this or a
substantially similar step, the Examiner fails to show Danzan anticipates
4 Unlike claim 1, claim 10 recites, "determining an alternative probable
valuation for the corresponding item of that transaction based at least in part
on the one or more unsuccessful offers." Supp. App. Br. 4. The Examiner
does not show where Danzan discloses "an alternative probable valuation,"
but, instead, simply relies on Danzan's discussion of the consideration of
unacceptable bids to disclose this limitation. Final Act. 9. We agree with
Appellant that this discussion is insufficient to support an anticipation
rejection of claim 10. App. Br. 18-19.
22
Appeal2017-009988
Application 13/841,634
each of these claims or claims 14 or 23-26, 5 as well as the rejected claims
depending therefrom.
For these reasons, we are persuaded that the Examiner erred in finding
the recited methods anticipated by Danzan. Accordingly, we do not sustain
the Examiner's rejection of claims 1, 3-5, 7-10, 12, 14, and 17-26 under 35
U.S.C. § 102(b).
C. Lack of Obviousness Over Danz an, alone or in combination with
Davis or Lebaric
Claims 2 and 6 stand rejected as rendered obvious over the combined
teachings of Danzan and Lebaric, claims 11 and 13 stand rejected as
rendered obvious over the teachings of Danzan, and claims 15 and 16 stand
rejected as rendered obvious over the combined teachings of Danzan and
Davis. Id. at 12-16. Each of these rejections relies on the finding of
anticipation by Danzan with respect to the base claims, claims 1 and 10.
Supp. App. Br. 2, 3, 4, and 5. For the reasons set forth above, we do not
sustain the Examiner's rejections of claims 1 and 10 as anticipated by
Danzan. See supra Section V.B. Thus, we also are persuaded that the
5 Unlike claims 1, 10, and 20, claim 22 recites neither "elasticity" nor "an
alternative probable valuation," but, instead, more broadly recites
"determining the valuation of the subject item based at least in part on the
one or more unsuccessful offers for each of the one or more comparable
items." Supp. App. Br. 8. Because we are not persuaded that the Examiner
shows that Danzan discloses determining the price of one property based on
unacceptable bids on other properties (Final Act. 11 ), the Examiner fails to
show that Danzan anticipates claim 22 for this additional reason. See
Danzan ,r 20 ("Exemplary feedback includes rejecting the bid, ignoring the
bid or contacting the buyer to further consummate a deal. The buyer may
then continue by deciding 408 to alter the biding parameters 402 or select
additional properties (409 then 401) or to end the process 410.").
23
Appeal2017-009988
Application 13/841,634
Examiner erred in determining the claims 2, 6, 11, 13, 15, and 16 rendered
obvious over the teachings of Danzan, alone or in combination with those of
Davis or Lebaric. Accordingly, we do not sustain the Examiner's rejection
of claims 2, 6, 11, 13, 15, and 16 under 35 U.S.C. § 103(a). See App. Br. 19;
Ans. 30.
VI. DECISION
For the above reasons, we affirm the Examiner's decision rejecting
claims 1-26 under 35 U.S.C. § 101. However, we reverse the Examiner's
rejections of (1) claims 1, 3-5, 7-10, 12, 14, and 17-26 under 35 U.S.C.
§ 102 and (2) claims 2, 6, 11, 13, 15, and 16 under 35 U.S.C. § 103.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See 37
C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
24