10536692 (P.T.A.B. Jul. 21, 2015)

Ex Parte Villena et al

Patent Trial and Appeal BoardJul 21, 2015

10536692 (P.T.A.B. Jul. 21, 2015)

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. 10/536,692 09/28/2005 Mario Villena 56290.1501 9301 95248 7590 07/21/2015 Northern Virginia Law and Technology Services, LLC 1934 Old Gallows Rd Suite 350 Vienna, VA 22182 EXAMINER RUHL, DENNIS WILLIAM ART UNIT PAPER NUMBER 3689 MAIL DATE DELIVERY MODE 07/21/2015 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 MARIO VILLENA and JOSE VILLENA ____________ Appeal 2015-000414 Application 10/536,692 Technology Center 3600 ____________ Before ANTON W. FETTING, NINA L. MEDLOCK and SHEILA F. McSHANE, Administrative Patent Judges. McSHANE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING AND REHEARING EN BANC The Appellants request rehearing of our Decision entered May 20, 2015, in which we affirmed the Examiner’s rejections of claims 133–151 and 155 under 35 U.S.C. § 103 (a) (Request for Rehearing and Request for Rehearing En Banc, filed June 14, 2015, hereinafter “Req. Reh’g” and Supplemental Request for Rehearing and Supplemental Request for Rehearing En Banc, filed June 24, 2015, hereinafter “Supp. Req. Reh’g”). The Appellants also request en banc review for some issues raised in the Request for Rehearing. Appeal 2013-001252 Application 12/418,484 2 Requests for Rehearing are limited to matters misapprehended or overlooked by the Board in rendering the original decision, or to responses to a new ground of rejection designated pursuant to § 41.50(b). 37 C.F.R. § 41.52. ISSUES ON REHEARING The Appellants raise Issues I–V in the Request for Rehearing, and Issues VI–VIII in the Supplemental Request for Rehearing, as follows: I. The Decision raises a new ground of rejection by changing the scope of the Examiner’s construction of claim 133. II. Some issues should be addressed by a rehearing en banc because claim construction is handled inconsistently from panel to panel. III. The 35 U.S.C. § 101 rejection should be reversed because the Decision’s construction of claim 133 does not reflect the claim as a whole, and include limitations not found in the claim. IV. The 35 U.S.C § 102 and 35 U.S.C § 103 rejections should be reversed because a cache cannot be a database per the Examiner’s findings. V. The 35 U.S.C § 102 and 35 U.S.C § 103 rejections should be reversed because there has been no showing by the Examiner that Sklarz’s cache contains a single valuation produced by one of its engines. VI. The rejection under 35 U.S.C § 102 should be reversed because the Examiner never asserted that all the limitations of the independent claims are disclosed in Sklarz and there is no inherency demonstrated. VII. The 35 U.S.C § 102 and 35 U.S.C § 103 rejections should be reversed because the Decision wrongly ignored evidence without cause. VIII. The 35 U.S.C § 102 and 35 U.S.C § 103 rejections should be reversed because improper evidence was considered, and the evidence was not considered as a whole. Appeal 2013-001252 Application 12/418,484 3 DISCUSSION Issue I In the Request, the Appellants seek a rehearing related to an alleged change in the Examiner’s construction of claim 133 in the Decision. The Appellants state that: The Examiner asserts that the claim(s) is/are directed to “providing of AVM values to customers, including updated AVM values.” See Examiner’s Answer p. 3, second paragraph. This construction is not the construction adopted by the PTAB. To the contrary, the PTAB’s construction, which is broader than the Examiner’s construction, is that claim 133 is directed to “providing updated AVM values to customers.” PTAB Decision, p. 3, last paragraph. Req. Reh’g; at 3. The citation the Appellants refer to in the Decision is a verbatim quote from the Answer. Compare Decision at 3 and Answer, mailed September 5, 2014, hereafter, “Ans.” 3. The Appellants’ identification of changes in wording appears to be due to differences within the wording of Answer itself (Ans. 3). The quotation in the Decision was not intended to be, nor does it serve as, the panel’s claim construction for any claim term. Issue II In the Request, the Appellants seek a rehearing en banc, alleging that there are inconsistent outcomes in Board decisions, and the claim as a whole should be considered pursuant to Alice. Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347 Appeal 2013-001252 Application 12/418,484 4 (2014). The Appellants further contend that the panel did not give weight to the “AVM” term of the claim. In rendering the Decision, the panel considered the “AVM” term, as well as the claims as a whole, giving weight to each word and limitation. We, therefore, decline the invitation to address portions of the Decision en banc. Issue III In the Request, the Appellants contend that under both of the different alleged claim constructions of the Examiner and the panel, the construction added the term “customer” to claim 133, and adding limitations to a claim is impermissible so the Examiner’s § 101 rejection should be reversed. The Appellants further allege that proper weight was not afforded to all terms in the claims. As discussed above, there is no differing claim construction between the Examiner and the panel. Additionally, the record does not indicate that the Examiner construed the term “customer” or “user.” The issue of the use of the term “customer” by the Examiner in the rejection has been raised for the first time in this Request. Although we could decline to address this issue,1 we state that although the Examiner used the term “customers,” because it was used interchangeably in a few instances with the claim term “users,” we assumed this was inadvertent harmless error. In evaluating the claims and rendering our 1 See 37 C.F.R. § 41.52 (A rehearing is limited to “the points believed to have been misapprehended or overlooked by the Board”); 37 C.F.R. § 41.37(c)(1)(iv) (“…any arguments or authorities not included in the appeal brief will be refused consideration by the Board for purposes of the present appeal.”). Appeal 2013-001252 Application 12/418,484 5 decision, we considered the claims as written, with the term “users,” ascribing no material difference due to the Examiner’s use of the term “customers.” In rendering the Decision, the panel considered the claims as a whole, giving weight to each word and limitation. For instance, weight was afforded to updating of AVM values per claim 133, particularly in the review of the latency arguments proffered by the Appellants. See Decision at 4–5. Issue IV In the Request, the Appellants state that, according to the Examiner, a database is a “collection of related data” (Ans. 16), which the Appellants contend is abstract and unpatentable pursuant to Digitech Image Technologies, but a cache is a physical thing. Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). On this basis, the Appellants seek reversal of the Examiner’s anticipation and obviousness rejections. This argument is raised here for the first time. Accordingly we were not placed in a position to consider this in the Decision. Issue V In the Request, the Appellants contend that the Examiner never identified a portion of Sklarz disclosing where a query produces an AVM estimate that is then stored in a cache, and, absent that showing, the obviousness and anticipation rejections should be reversed. The Appellants further state that they are entitled to this showing under 37 C.F.R. § 1.104(c)(2). This issue was addressed in the Decision at 9 and 12–13. The Examiner referred to Sklarz for querying and calculation of AVMs (Sklarz Figs. 12, 16, ¶ 223). Responses to queries, including the estimated appraised value or predicted Appeal 2013-001252 Application 12/418,484 6 sales price (AVM), are stored in the cache by Sklarz’s disclosed system. (Sklarz ¶ 214) (“The VYH server software caches queries, and the response generated by a query, for a period of time (“cache period”) selected by the operator of a VYH service”)(emphasis added). Issue VI In the Supplemental Request, the Appellants seek rehearing of the anticipation rejection of the claims, contending that the Examiner did not establish prima facie anticipation by demonstrating that the Sklarz reference discloses every element of the claims, either expressly or inherently. The Appellants identify two alleged issues related to anticipation: 1) that for claim 133, the Examiner did not demonstrate that the Sklarz cache contains an AVM value for “a plurality of properties”; and 2) that the cache must repeatedly update cache values—although Appellants note the Examiner found that it has the ability to perform that updating, a user can choose to never perform an update. The Appellants also add that because Sklarz allows variable cache periods, if a user chose a sufficiently short time period, it would preclude the possibility of meeting the claim limitations. These specific arguments are raised here for the first time. Accordingly we were not placed in a position to consider this in the Decision. Issue VII In the Supplemental Request, the Appellants contend that the panel disregarded evidence related to an article from National Mortgage Professional in the Decision that stated: We further view the portion of the National Mortgage Professional Magazine referred to as more limited and Appeal 2013-001252 Application 12/418,484 7 distinguishable in context than the Appellants suggest. For instance, this article includes limited bullet points comparing AVMs with traditional appraisals and broker opinions only—where the traditional appraisals and broker appraisals both are understandably noted to require “human judgment.” It is not reasonable to rely on selected phrases taken out of context from a trade magazine to support a construction of AVMs which is as limited as Appellants advocate. The Appellants specifically dispute the last sentence of this portion of the Decision, stating that nothing was taken out of context. To clarify, the panel was not suggesting that the Appellants misrepresented the statements in the article in any manner. Rather, our intent was to relay that, in our view, when the article is read in total, we do not find it sufficiently persuasive to support the Appellants’ position based upon a preponderance of the evidence standard. This evidence was not disregarded; it was fully considered by the panel in rendering our decision. Issue VIII In the Supplemental Request, the Appellants contend that the panel improperly introduced evidence at the oral hearing, and then did not consider the evidence as a whole, therefore, the anticipation and obviousness rejections should be reversed. The decision of the Board is “based exclusively on the written record in the Office,” and no other references were relied upon in rendering the panel’s decision. 37 C.F.R. § 1.2; see also, In re Chaddix, 209 USPQ 78 (Comm’r Pat. 1980). Appeal 2013-001252 Application 12/418,484 8 CONCLUSION In view of the foregoing, we have granted the Appellants’ Requests to the extent that we have reconsidered our Decision, but we are not persuaded that we misapprehended or overlooked any points of law or fact in rendering our decision. We therefore deny the Appellants’ request to modify our Decision and the Examiner’s rejections remain affirmed. DECISION We decline to reconsider the Appellants’ arguments en banc. Although we have reconsidered certain aspects of our original Decision in light of the Appellants’ arguments, we decline to modify our original Decision. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). DENIED pgc