Ex Parte Seitomer et al

Patent Trial and Appeal Board

Jul 30, 2018

12191787 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/191,787 08/14/2008
23460 7590 08/01/2018
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Esin Seitomer
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.
702304 1502
EXAMINER
ZIEGLE, STEPHANIE M
ART UNIT PAPER NUMBER
4165
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ESIN SEITOMER and TIM ARONE
Appeal2017-003776
Application 12/191,787
Technology Center 3600
Before ST. JOHN COURTENAY III, JENNIFER L. McKEOWN, and
JOHN P. PINKERTON, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4--11, 14, 15, 18, and 19, which are all the claims pending in this
application. Claims 2, 3, 12, 13, 16, and 17 are cancelled. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is American
International Group, Inc. App. Br. 1.
Appeal2017-003776
Application 12/191,787
STATEMENT OF THE CASE
Introduction
Appellants' invention "relates generally to systems and methods for
estimating the value of a residential property and its contents ... to provide
an initial insurance premium quote for insurance coverage for a home
insurance product." (Spec. ,r 1 ).
Exemplary Claim
1. A method for calculating an estimated replacement cost
of a home fix insurance coverage for the home, the method
compnsmg:
accessing a home value estimator application stored on a
non-transitory computer readable storage medium and operated
on a processor;
displaying a user interface of the home value estimator
application across a communication network;
receiving data pertaining to different characteristics of
the home from the user interface of the home value estimator
application, the different characteristics comprising data
pertaining to home renovations and home contents, the home
renovations data comprising data pertaining to additions and
alterations made to the home, the home contents data
comprising data pertaining to home furnishings and clothing
wardrobes in the home, and the data comprising the quantity
and the quality of the home renovations and the home contents;
retrieving replacement costs of the different
characteristics of the home using the home value estimator
application from at least one matrix stored in a replacement
cost database operably arranged with the processor based on
the data pertaining to different characteristics of the home
received through the user interface, the replacement costs
including replacement costs based upon the data pertaining to
2
Appeal2017-003776
Application 12/191,787
home renovations and home contents, including the home
renovations data comprising data pertaining to additions and
alterations made to the home, the home contents data
comprising data pertaining to home furnishings and clothing
wardrobes in the home, and the data
comprising the quantity and the quality of the home renovations
and the home contents;
calculating, using the home value estimator application,
an estimated replacement cost of the home from the
replacement costs of the different characteristics of the home;
and
generating an initial insurance premium and an initial
insurance coverage amount based upon the estimated
replacement cost.
App. Br. 25 ( emphasis added to contested limitations).
Rejections
A. Claims 1, 4--11, 14, 15, 18, and 19 are rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. Final Act. 5.
B. Claims 15, 18, and 19 are rejected under pre-AIA 35 U.S.C. § I03(a)
as being obvious over the combined teachings and suggestions of
AccuCoverageâ„¢ Website2, hereinafter AccuCoverage, in view of
Cheng et al (US 2007/0198278 Al; August 23, 2007), hereinafter
Cheng, in view of Birchall (US 2008/0097796 Al; April 24, 2008).
C. Claims 1, 4--11, and 14 are rejected under pre-AIA 35 U.S.C. § I03(a)
as being obvious over the combined teachings and suggestions of
2 Available at
https://web.archive.org/web/20060717111012/http://www.accucoverage.
com/Home.aspx (last visited on July 27, 2018).
3
Appeal2017-003776
Application 12/191,787
AccuCoverage, Cheng, Birchall, and Stender (US 7,343,310 Bl;
March 11, 2008).
D. Claim 5 is rejected under pre-AIA 35 U.S.C. § I03(a) as being
obvious over the combined teachings and suggestions of
AccuCoverage, Cheng, Birchall, Stender, and Geraghty (US
2002/0099596 Al; July 25, 2002).
Grouping of Claims
Claims 1, 11, and 15 are independent claims. Regarding § 103
rejections B, C, and Dover the cited prior art, and based upon Appellants'
arguments, we decide the appeal of rejection C of claims 1, 4--11, and 14 on
the basis of representative independent claim 1. Based on Appellants'
arguments, we decide the appeal of rejection B of claims 15, 18, and 19 on
the basis of representative independent claim 15. We address § 103
rejection D of dependent claim 5, infra. See 37 C.F.R. § 4I.37(c)(l)(iv)
(2012).
Issues on Appeal
Did the Examiner err in rejecting claims 1, 4--11, 14, 15, 18, and 19
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter?
Did the Examiner err in rejecting claims 1, 4--11, 14, 15, 18, and 19
under pre-AIA 35 U.S.C. § I03(a) as being obvious over the cited
combinations of references?
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
4
Appeal2017-003776
Application 12/191,787
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv). We highlight and address specific findings
and arguments for emphasis in our analysis below.
Mayo/Alice Analysis under 35 USC§ 101
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 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. Pty.
Ltd. v. CLSBankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework previously
set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 82-84 (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. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "individually and 'as an ordered
5
Appeal2017-003776
Application 12/191,787
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, at 2355
(quoting Mayo, 566 U.S. at 79, 78). We consider the question of whether
the claims are directed to a specific improvement in the capabilities of the
computing devices, or, instead, "a process that qualifies as an 'abstract idea'
for which computers are invoked merely as a tool." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We, therefore, decide under step two whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1336.
The Examiner's Rejection A under 35 USC§ 101
Regarding the first step of the Alice/ Mayo analysis, the Examiner
concludes claims 1, 4--11, 14, 15, 18, and 19 are directed to an abstract
idea: 3
Claim( s) 1, 4-11, 14, 15, 18 and 19 are directed to a system and
series of steps for estimating a cost (including the steps of:
accessing a home value estimator application ... , displaying a
user interface ... , receiving data pertaining to different
characteristics of the home ... , retrieving replacement costs ..
. , calculating as estimated replacements cost of the home ... ,
and generating an initial insurance premium and an initial
insurance coverage ... ), which is a fundamental economic
practice, as well as a method of organizing human activities,
and thus an abstract idea.
3 "Patent eligibility under§ 101 presents an issue of law .... " Accenture
Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed.
Cir. 2013).
6
Appeal2017-003776
Application 12/191,787
Additionally, the courts have recognized similarly directed
claims of comparing new and stored information and using
rules to identify options (SmartGene), organizing information
through mathematical correlations (Digitech ), using categories
to organize, store and transmit information ( Cyberphone ),
creating a contractual relationship (buySAFE), and a
mathematical procedure for converting one form of numerical
representation to another (Benson) to all be directed to abstract
ideas.
Final Act. 7 ( emphasis added).
Regarding the second step of the Mayo/Alice analysis, the Examiner
finds the claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception,
because the claims do not provide improvements to another
technology or technical field, improvements to the functioning
of the computer itself, and do not provide meaningful
limitations beyond general linking the use of an abstract idea to
a particular technological environment. Additionally, the claims
are directed to an abstract idea with additional generic computer
elements that do not add meaningful limitations to the abstract
idea because they require no more than a generic computer to
perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the
industry. The Dependent claim(s) when analyzed as a whole are
also held to be patent ineligible under 35 U.S.C. 101 because
for the same reasoning as above and the additional recited
limitation( s) fail( s) to establish that the claim( s) is/ are not
directed to an abstract idea.
Final Act. 7 ( emphasis added). 4
4 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
7
Appeal2017-003776
Application 12/191,787
For the aforementioned reasons, the Examiner concludes that all
claims 1, 4--11, 14, 15, 18, and 19 on appeal are not patent-eligible under
35 U.S.C. § 101.
Mayo/Alice Analysis - Step 1
Regarding Alice Step 1, Appellants argue that the appealed claims do
not "simply claim an abstract idea, a mental process or substantially all
practical uses of a law of nature or a natural phenomenon." App. Br. 5.
However, Appellants provide no substantive arguments regarding
Alice Step 1. App. Br. 5-7. Arguments not made are waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv). Therefore, we proceed to Alice Step 2.
Mayo/Alice Analysis-Step 2
Because we conclude the claims are directed to an abstract idea for
essentially the same reasons articulated by the Examiner (Final Act. 5), we
tum to the second part of the Alice/Mayo analysis. We analyze the claims to
determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to "' significantly more"'
than the abstract idea. Alice, at 2357.
Regarding Alice Step 2, Appellants address the purported inventive
concept of the claims:
Without acquiescing in any way to the conclusion in the
pending Office Action that the claims are directed to "a
fundamental economic practice, as well as a method of
organizing human activities, and thus an abstract idea," May 1,
2015 Office Action, p. 2, ,r 19, it is respectfully submitted that
each appealed claim of the present application includes
additional features that ensure the claims are more than a
drafting effort designed to monopolize an abstract idea.
App. Br. 7 (emphasis added).
8
Appeal2017-003776
Application 12/191,787
In support, Appellants cite to "DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014) (holding that claims directed to
syndicated commerce on the computer using the Internet recite patent
eligible subject matter)." App. Br. 7. Appellants urge that "[e]ach appealed
claim includes significantly more than a judicial exception itself and is
directed to a new and useful application." Id. However, Appellants provide
no evidence in support of this argument.
We do not find that Appellants' claims are similar to the claimed
solution the court held to be patent-eligible in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). In DDR, the Federal
Circuit applied the Supreme Court's Alice two-step framework, and upheld
the validity of DDR's patent on its web-page display technology. DDR, 773
F.3d at 1255.
We note the court in DDR emphasized that the '399 patent claims did
not "recite a fundamental economic or longstanding commercial practice."
DDR, 773 F.3d at 1257. As distinguished from the claims considered by the
court in DDR, Appellants' claims are directed to a method or system for
calculating an estimated replacement cost of a home for insurance purposes,
and thus are directed to a fundamental economic practice, for the reasons
discussed above regarding Alice step 1.
Moreover, the problem addressed by Appellants' claims is not similar
or otherwise analogous to the specific technical problem addressed by the
subject claims in DDR, which were directed to retaining a website visitor
when the visitor clicked on a third-party merchant's advertisement on the
host website. Instead of taking the visitor to the third-party merchant's
website (and thus losing the visitor to the third-party merchant), DDR's
9
Appeal2017-003776
Application 12/191,787
claimed system generated a hybrid web page that (1) displayed product
information from the third-party merchant, but also (2) retained the host
website's "look and feel."
Here, Appellants' claims 1, 4--11, 14, 15, 18, and 19 are not directed
to a website that retains the host website's "look and feel" while displaying
product information from the third-party merchant, as was the case in DDR,
at 1257. Although Appellants' invention is directed to the result of
"generating an initial insurance premium and an initial insurance coverage
amount based upon the estimated replacement cost" ( claim 1 ), we find such
premium and coverage amounts are at best merely directed to an
improvement in the insurance-relevant informational content (i.e., data) as
intended to be viewed and considered by a person.
Specifically, we find no language in the claims on appeal that focuses
on a specific improvement to the recited processor that performs all the
recited steps or functions of computer-implemented claims 1, 4--11, 14, 15,
18, and 19. The claims on appeal are silent regarding specific limitations
directed to an improved computer system, processor, memory, network,
database, or Internet. Therefore, we find Appellants' claimed invention does
not provide a solution "necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,"
as considered by the court in DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d at 1257. (emphasis added).
Further regarding the use of the recited generic "processor",
"database" ( claim 1 ), "server" and "communication network" ( claim 11 ), the
Supreme Court held "the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention."
10
Appeal2017-003776
Application 12/191,787
Alice, at 2358; see also Bascom Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An abstract idea on 'an
Internet computer network' or on a generic computer is still an abstract
idea.").
Our reviewing court has "repeatedly held that such invocations of
computers and networks that are not even arguably inventive are
'insufficient to pass the test of an inventive concept in the application' of an
abstract idea." Elec. Power Grp., LLC, v. Alstom S. A.1.. 830 F.3d 1350, 1355
(Fed. Cir. 2016) (internal citations omitted); see also Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017)
("Rather, the claims recite both a generic computer element-a processor-
and a series of generic computer 'components' that merely restate their
individual functions . . . . That is to say, they merely describe the functions
of the abstract idea itself, without particularity. This is simply not enough
under step two.").
Appellants further contend the Bilski machine-or-transformation test
is applicable because,
claim 1 satisfies the machine-or-transformation test. For
example, the method of claim l includes: accessing a home
value estimator application stored on a non-transitory computer
readable storage medium and operated on a processor; and
displaying a user interface of the home value estimator
application across a communication network. These steps
identify particular devices and require a particularly-
programmed machine. It is respectfully submitted that the use
of these features breathes life and meaning into the claims,
imposes a meaningful limit on the claim's scope, and involves
more than insignificant "extra-solution" activity.
App. Br. 7 ( emphasis omitted).
11
Appeal2017-003776
Application 12/191,787
The Bilski "Machine-or-Transformation" test 5
As recognized by the Federal Circuit in Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014), the machine-or-transformation
test, as outlined in In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008), can
provide a "useful clue" in the second step of the Alice framework. Under
Bilski 's machine-or-transformation test, a claimed process can be patent-
eligible under § 101, if:
(1) it is tied to a particular machine or apparatus; or
(2) the process transforms a particular article into a different state or
thing. Bilski, 545 F.3d at 954 (citing Gottschalk v. Benson, 409 U.S. 63, 70
(1972)).
Applying the machine-or-transformation test here ( only to method
(process) claims 1, 4--10, 15, 18, and 19), we conclude that none of
Appellants' method claims are sufficiently tied to a particular machine,
because it is our view that a generic processor, without more, is not a
particular machine. 6 Nor have Appellants established that the method
claims on appeal transform a particular (physical) article into a different
state or thing.
5 As held by the Supreme Court, "although the machine-or-transformation
test is reliable in most cases, it is not the exclusive test. . . . [R ]ather it is a
critical clue." Bilski v. Kappas, 561 U.S. 593, 613-14 (2010) (Justices
Stevens, Ginsburg, Breyer, and Sotomayor concurring).
6 Our reviewing courts have not precisely defined the contours of a
"particular machine." Cf "[T]he fact that one of skill in the art could
program a computer to perform the recited functions cannot create structure
where none otherwise is disclosed." Williamson v. Citrix Online, LLC, 792
F.3d 1339, 1351 (Fed. Cir. 2015) (citing Function Media, L.L.C. v. Google,
Inc., 708 F.3d 1310, 1319 (Fed. Cir. 2013)).
12
Appeal2017-003776
Application 12/191,787
The Supreme Court provides further guidance in Bilski v. Kappas, 561
U.S. 593 (2010), that a "prohibition against patenting abstract ideas 'cannot
be circumvented by attempting to limit the use of the formula to a particular
technological environment."' Id. at 610 ( citation omitted).
Because none of Appellants' claims on appeal is directed to an
improvement in a processor, database, or other computer/network
component, we conclude that none of the claim limitations, viewed both
individually and as an ordered combination, amounts to significantly more
than the judicial exception in order to sufficiently transform the nature of the
claims into patent-eligible subject matter.
Applying the aforementioned guidance from our reviewing courts to
the claims before us on appeal, we conclude, in our Mayol Alice analysis, that
each of Appellants' claims 1, 4--11, 14, 15, 18, and 19, considered as a
whole, is directed to (under step one), a patent-ineligible abstract idea, and
under step two, does not recite something "significantly more" (Alice, at
2357 (internal citation and quotations omitted)) to transform the nature of
the claim into a patent-eligible application.
Accordingly, for at least these reasons, we sustain the Examiner's
rejection A under 35 U.S.C. § 101 of claims 1, 4--11, 14, 15, 18, and 19, as
being directed to patent-ineligible subject matter in light of Alice and its
progeny. 7
7 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
13
Appeal2017-003776
Application 12/191,787
Rejection C of Independent Claim 1 under§ 103 (a)
Issues: Under pre-AIA 35 U.S.C. § 103(a), did the Examiner err by
finding that AccuCoverage, Cheng, Birchall, and Stender would have
collectively taught or suggested the contested receiving, retrieving,
calculating, and generating claim limitations emphasized above, within the
meaning of representative independent claim 1? 8
Appellants merely recite the claim language (App. Br. 17), and urge
that "Birchall is focused on conducting a claim adjustment process for a
specific insured item rather than determining a replacement cost for a
home's contents." App. Br. 18.
However, our reviewing court guides it is irrelevant that the prior art
and the present invention may have different purposes. See Nat 'l Steel Car,
Ltd. v. Canadian Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004) ("A
finding that two inventions were designed to resolve different problems ...
is insufficient to demonstrate that one invention teaches away from
another."). It is sufficient that references suggest doing what Appellants did,
although the Appellants' particular purpose was different from that of the
references. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re
Gershon, 372 F.2d 535, 539 (CCPA 1967)). For a prima facie case of
obviousness to be established, the reference need not recognize the same
problem solved by the Appellants. See In re Kemps, 97 F.3d 1427, 1430
(Fed. Cir. 1996). The Supreme Court provides further guidance: "[N]either
the particular motivation nor the avowed purpose of the [Appellants]
8 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
14
Appeal2017-003776
Application 12/191,787
controls" when performing an obviousness analysis. KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398, 419 (2007).
Further, Appellants fail to address the Examiner's specific findings
regarding the contested limitations. See Final Act. 8-9. Instead, Appellants
merely recite the language of claim 1, without any substantive argument.
App. Br. 17-18. As such, we find Appellants' arguments unpersuasive.
See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art.").
We note that attorney arguments and conclusory statements that are
unsupported by factual evidence are entitled to little probative value.
See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997). Therefore, based
upon our review of the record, and a preponderance of the evidence, we are
not persuaded by Appellants' arguments. Accordingly, we agree with and
adopt the Examiner's underlying factual findings and legal conclusion of
obviousness regarding the contested limitations of representative
independent claim 1. (Final Act. 11 ).
Combinability of the Cited References under§ 103 (a)
Appellants additionally contend the Examiner has relied upon
impermissible hindsight in combined the cited references. (App. Br. 16).
Appellants urge:
It is respectfully submitted that the ordinary artisan, having no
prior knowledge of [Appellants'] invention, would not have a
credible reason for modifying the AccuCoverage estimate
15
Appeal2017-003776
Application 12/191,787
worksheet with any of the features of: Cheng's approach to
determining a current value for real estate: Birchall's method
for salvage calculation; and/or Stender's method for providing
web-based user interface to legacy, personal-lines insurance
applications, in such a way as to arrive at the method for
estimating a replacement cost of a home recited in claim 1.
App. Br. 16.
However, the Supreme Court provides applicable guidance: "when a
patent 'simply arranges old elements with each performing the same
function it had been known to perform' and yields no more than one would
expect from such an arrangement, the combination is obvious." KSR, 550
U.S. at 417 (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273,282 (1976)).
Further regarding Appellants' allegation the Examiner relied on
impermissible hindsight in formulating the rejection (App. Br. 16),
Appellants have not provided any objective evidence of secondary
considerations (e.g., unexpected results, long-felt but unmet need,
commercial success), which our reviewing court guides "operates as a
beneficial check on hindsight." Cheese Systems, Inc. v. Tetra Pak Cheese
and Powder Systems, Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Moreover, on this record, we find the Examiner (Final Act. 12-13)
has set forth sufficient "articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness." In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006). Specifically the Examiner cites to a
specific portion of Cheng (i-f 6) as providing a motivation for the proffered
combination. Similarly, the Examiner cites to a specific portion of Birchall
(i-f 6) as providing a motivation for the proffered combination. Final Act. 13.
Appellants have not addressed the Examiner's specific findings. Id.
16
Appeal2017-003776
Application 12/191,787
Therefore, based upon a preponderance of the evidence, we are not
persuaded of error regarding the Examiner's underlying factual findings and
ultimate legal conclusion of obviousness regarding independent claim 1.
Accordingly, we sustain rejection C of representative independent
claim 1. We find Appellants' arguments regarding rejection C of
independent claim 11 (App. Br. 19--20) are essentially directed to the same
issues we have addressed supra regarding independent claim 1. Therefore,
we sustain rejection C of independent claim 11 for the same reasons
discussed above regarding claim 1. The remaining grouped dependent
claims 4--10 and 14, also rejected under rejection C, and not substantively
argued separately, fall with representative claim 1. See 37 C.F.R. §
4I.37(c)(l)(iv).
Rejection B of Independent Claim 15
Appellants merely recite the claim language regarding the recited
steps of collecting, employing, and calculating. Claim 15; see App. Br. 22.
However, Appellants fail to address the Examiner's specific findings
regarding the contested limitations. See Final Act. 8-10. Given the absence
of substantive argument traversing the Examiner's specific findings (id.), on
this record, we are not persuaded the Examiner erred. See Lovin, 652 F.3d at
1357.
However, Appellants additionally contend:
none of the references teach or suggest the collecting the
particular replacement cost data recited in the collecting step
claimed or using the quality of the clothing wardrobes in the
home as a basis for calculating the estimated total replacement
cost of the home as recited in claim 15. Birchall is focused on
conducting a claim adjustment process for a specific insured
17
Appeal2017-003776
Application 12/191,787
item rather than determining a replacement cost for a home's
contents which is used in preparing a total replacement cost of a
home.
App. Br. 22-23 ( emphasis added).
In the Answer, the Examiner further explains the basis for the
rejection:
It appears as if the Applicant is reading limitations into the
claims. Consequently, the points argued are not recited in the
claims themselves. The claims merely recite that the
replacement costs are based on the quantity and quality of the
home renovations and the home contents rather than the quality
of the clothing wardrobe. AccuCoverage, in at least pages 10-
13, discloses calculating a replacement cost for a home by
determining and adding costs for the different characteristics of
a home using component based technology and that different
finishes and materials have different replacement costs that a
user inputs via a user interface and the AccuCoverage system
using component based technology and retrieving the
replacement cost data from information stored in databases
based upon the user inputted data. AccuCoverage also
indicated that the replacement cost calculations can use used for
insurance purposes on pages 10-11. AccuCoverage also
discloses that different home finishes and products would
have different replacement costs. Cheng, in at least Figures 1-
2, and 14-20, discloses calculating replacement costs based on
data regarding home renovations including the quantity
and quality of the home renovations. Birchall, in at least the
abstract, Figures 3-4, and paragraph 0002, discloses
determining replacement costs based on data regarding home
contents including home furnishings and personal possessions
in the home. It would have been obvious to one skilled in the
art that personal possessions include both clothing and home
furnishings. Therefore, when combined as shown in the final
rejection, the combination of AccuCoverage, Cheng, and
Birchall, does indeed disclose the claimed limitations.
Ans. 18-19.
18
Appeal2017-003776
Application 12/191,787
Based upon our review of the evidence cited by the Examiner (id.), we
find including the quality of the clothing wardrobe(s) in the home (and the
corresponding estimated replacement cost) as a basis for calculating the
estimated total replacement cost for a home (including any other valuable
chattel stored within the home) would have merely been a predictable result.
See KSR, at 401 ("[A] combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.").
Therefore, based upon a preponderance of the evidence ( as cited by
the Examiner Ans. 18-19), we are not persuaded of error regarding the
Examiner's underlying factual findings and ultimate legal conclusion of
obviousness. Nor have Appellants filed a Reply Brief in response to the
Examiner's findings and explanations in the Answer. Accordingly, we
sustain rejection B of representative independent claim 15. The remaining
dependent claims 18 and 19, also rejected under rejection B, and not
substantively argued separately, fall with claim 15. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
Rejection D of Remaining Dependent Claim 5
Appellants advance no separate substantive arguments regarding
claim 5, as rejected by the Examiner under rejection D. See Final Act. 19-
20. Arguments not made are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
19
Appeal2017-003776
Application 12/191,787
Conclusions
The Examiner did not err in rejecting claims 1, 4--11, 14, 15, 18, and
19 under 35 U.S.C. § 101, as being directed to patent-ineligible subject
matter.
The Examiner did not err in rejecting claims 1, 4--11, 14, 15, 18, and
19, under pre-AIA 35 U.S.C. § 103(a), as being obvious over the combined
teachings and suggestions of the cited references.
DECISION
We affirm the Examiner's decision rejecting claims 1, 4--11, 14, 15,
18, and 19, under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1, 4--11, 14, 15,
18, and 19, underpre-AIA35 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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
20