Ex Parte Villena et al

Patent Trial and Appeal Board

Dec 19, 2016

13294044 (P.T.A.B. Dec. 19, 2016)

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.
13/294,044 12/02/2011 Mario Villena HXI.001.DV 2048
95248 7590 12/19/2016
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
12/19/2016 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 2015-0009491
Application 13/294,0442
Technology Center 3600
Before BIBHU R. MOHANTY, JAMES A. WORTH, and
BRADLEY B. BAYAT, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final rejection of claims 57—59. We have jurisdiction under 35 U.S.C.
§§ 134 and 6(b).
We AFFIRM.
1 Our decision refers to the Appellants’ Appeal Brief (“Appeal Br.,” filed
Aug. 18, 2014) and Reply Brief (“Reply Br.,” filed Sept. 29, 2014), and the
Examiner’s Final Office Action (“Final Act.,” mailed June 4, 2014) and
Answer (“Ans.,” mailed Sept. 5, 2014).
2 According to Appellants, the real parties in interest are Mario Villena and
Jose Villena (Appeal Br. 3).
Appeal 2015-000949
Application 13/294,044
Introduction
Appellants’ application relates to “a computer-based system for
creating and maintaining massive databases containing computationally
complex and novel property information” (Spec. 11).
Claims 57, 58, and 59 are the independent claims on appeal. Claim
57, reproduced below, is illustrative of the subject matter on appeal:
57. A system for distributing real-estate related
information, comprising:
one or more computers configured to:
receive user-provided information and
determine a geographic region based on received
user-provided information;
produce a plurality of automated valuation
method (AVM) values using residential property
information, the residential properties being within
the geographic region, the AVM values reflecting
current market estimates for the residential
properties;
provide display information to a remote
terminal over a publically accessible network
based on the user-provided information, the
display information enabling the remote terminal
to generate a map-like display for the geographic
region, the map-like display containing at least:
respective icons for each of a plurality of
residential properties within the geographic region,
the icons being spatially distributed relative to one
another based on geographic information also
residing in one or more computer-readable
mediums; and
an AVM value for at least one of the
plurality of residential properties within the map­
like display, wherein each AVM value is pre-
process such that an AVM value for the at least
one residential property pre-exists before a user
query of the respective property is performed,
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Application 13/294,044
and wherein the one or more computers
update each of the AVM values without requiring
a user query.
(Appeal Br. 59, Claims App.)
Rejections on Appeal
The Examiner maintains, and Appellants appeal, the following
rejections:
I. Claims 57—59 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory
subject matter because the claim(s) as a whole,
considering all claim elements both individually and in
combination, do not amount to significantly more than an
abstract idea.3
II. Claims 57—59 stand rejected under 35 U.S.C. § 112 (pre-
AIA), first paragraph, as failing to comply with the
written description requirement.
III. Claims 57—59 stand rejected under 35 U.S.C. § 112 (pre-
AIA), second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject
matter which the applicant regards as the invention.
IV. Claims 58 and 59 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35
U.S.C. § 103(a) as obvious over Sklarz (US
2002/0087389 Al, pub. July 4, 2002).
3 This rejection was set forth in the Answer pursuant for the procedures for
a new ground of rejection in the Answer.
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Appeal 2015-000949
Application 13/294,044
V. Claim 57 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Sklarz and Florance (US
2004/0030616 Al, pub. Feb. 12, 2004).
ANALYSIS
Rejection I (Patentable Subject Matter)
Claims 57—59
In analyzing whether claimed subject matter is patent eligible, the
Court in Alice articulated the use of a two-step framework set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289
(2012):
First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. If so, we
then ask, “[wjhat else is there in the claims before us?” To
answer that question, we consider the elements of each claim
both individually and “as an ordered combination” to determine
whether the additional elements
transform the nature of the claim” into a patent-eligible
application.
See Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014). See
also USPTO 2014 Interim Guidance on Patent Subject Matter Eligibility, 79
Fed. Reg. 74,618, 74,621 (Dec. 16, 2014).
The Examiner rejected claims 57—59 as being directed to the abstract
idea of providing updated AVM (automated valuation method) values to
customers, which the Examiner finds is a method of organizing human
activities and a fundamental economic practice that has long been prevalent
in our system of commerce such as in the real estate industry (Ans. 3). With
respect to the individual recitations, the Examiner finds that the ability to
receive user provided information is routine and conventional in the
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Application 13/294,044
computing arts; that producing a plurality of AVM values is simply the
executing of a mathematical algorithm; that providing display information to
a remote terminal is performed on a general computing device; and that
claims do not result in any improvement to the functioning of the computer
itself, and do not effect an improvement in another technology or technical
field (Ans. 3 4). We agree with the Examiner’s findings and
determinations. Appellants put forth several arguments which we address in
turn.
First, Appellants argue that the claims are not sufficiently abstract to
warrant exclusion because the claims do not fall into any of the categories of
organizing human activities, fundamental economic practices, ideas in and
of themselves, and mathematical relationships and formulas (Reply Br. 6).
Appellants assert that the Examiner has not provided any evidence in
support of the finding that the claims are directed to categories of human
activities, fundamental economic practices, or mathematical relationship and
that the Examiner has not asserted the claim recites an idea in and of itself
{id. at 7—11). Whether the Examiner has provided evidence in support of the
proposition that providing property values is a way of organizing human
activity or a long-prevalent economic practice, it is evident from the claim
language itself that the “automated” valuation is based on mathematical
algorithms.
Further, putting aside the history and long-standing nature of property
valuation, we agree with the Examiner that the idea of property valuation is
fundamental to an economic system. See Versata Development Group, Inc.
v. SAP America, Inc., 793 F.3d 1306, 1333—34 (Fed. Cir. 2015) (reviewing
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Application 13/294,044
cases and holding a computer-implemented method of determining a price to
be abstract).
Therefore, the subject matter of property valuation is “abstract” or
non-patentable for at least two independent reasons: (1) because it is based
on mathematical algorithms and (2) because it is directed to a fundamental
economic principle.
Appellants also argue that the claimed idea will not impede other
economic activity (Reply Br. 12). Although pre-emption of other inventions
may be the result of an abstract idea, a showing of pre-emption is not
required for a determination that an idea is directed to non-patentable subject
matter. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1377
(Fed. Cir. 2015) (“Where a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot.”).
Accordingly, we agree with the Examiner that under step one of Alice, claim
57, is directed to an abstract idea, i.e., property valuation.
Finally, Appellants argue that the claims are not abstract and are
patent eligible because the combination is unconventional and represents an
improvement in technology by creating a faster process (Reply Br. 13—18).
However, we agree with the Examiner that the claims may be performed on
a general purpose computer, and that Appellants have not persuasively
argued that the application of a mathematical algorithm to a general
computer represents a technological improvement. Therefore, we agree with
the Examiner that the additional recitations of claims 57—59, individually or
as a whole, do not remove the claims from the realm of patent-ineligible
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Application 13/294,044
subject matter. Thus, we sustain the Examiner’s rejection under § 101 of
claims 57—59.
Rejection II (Written Description)
Claims 57—59
The Examiner reasons that the limitation “update each of the AVM
values without requiring a user query,” as recited in independent claim 57 is
not supported by paragraph 65 of the Specification (Final Act. 3).
Appellants argue that the Specification need not disclose a claim limitation
in haec verba and that a negative limitation is adequately supported when the
specification describes a reason to exclude the relevant limitation (Appeal
Br. 16—22; see also Reply Br. 19 (citing Santarus v. Par Pharmaceutical,
694 F.3d 1344 (Fed. Cir. 2012)).
Written description support is sufficient if the specification conveys
that an applicant was in possession of the invention at the time of filing. See
LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1345 (Fed. Cir.
2005). A patent applicant is not required to describe explicitly in the
Specification every embodiment of the invention (id.).
We are persuaded by Appellants’ argument. Paragraph 65 of the
Specification states that the system updates the valuation “often.” Although
this paragraph does not say that this is done “without requiring a user
query,” in our view a person reading the Specification would understand that
the valuation is updated automatically or independently, i.e., without a user
query. Further, when paragraph 65 of the Specification states that the
valuation is updated “after every sale,” such a disclosure does not require a
user query even if it involves user input. As such, we do not sustain the
Examiner’s rejection under § 112, first paragraph, of independent claim 57.
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For similar reasons, we do not sustain the Examiner’s rejection under § 112,
first paragraph, of independent claims 58 and 59.
Rejection III (Indefiniteness)
Claims 57—59
The Examiner reasons that the limitation “update each of the AVM
values without requiring a user query,” as recited in independent claim 57 is
indefinite because it is a negative limitation that is unclear (Final Act. 3).
Appellants argue that negative limitations are permissible (Appeal Br. 24—27
(citing MPEP § 2173.05(i)).
We are persuaded by Appellants’ arguments. Although negative
limitations may be disfavored, i.e., when they are unsupported by the
original Specification, they may be used when adequately supported by the
Specification. Further, we conclude that it is reasonably clear that “without
requiring a user query” is another way of saying that the database is updated
by the computer automatically. As such, we do not sustain the Examiner’s
rejection under § 112, second paragraph, of independent claim 57. For
similar reasons, we do not sustain the Examiner’s rejection under § 112,
second paragraph, of independent claims 58 and 59.
Rejection IV (Anticipation and/or Obviousness Over Sklarz)
Claims 58 and 59
We are persuaded by Appellants’ argument that Sklarz fails to
disclose updating AVM values, as recited in independent claim 58, i.e.,
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Application 13/294,044
“update each of the AVM databases values without requiring a user query”
(Appeal Br. 37,49-51, 52).4
The Examiner correctly finds that paragraph 51 of Sklarz discloses
that databases are updated periodically (Final Act. 12). However, the
Examiner has not shown that the information in the database which is
updated periodically is an appraisal value (i.e., rather than previous sale
price). Rather the information in the VYH database of paragraph 51 is VYH
data type information, as set forth in paragraph 48, or, in the alternative,
MLS (Multiple Listing Service) data. Indeed, the Examiner relies on
paragraphs 3, 7, 15, 18, 223, 248, and 250 of Sklarz for appraisal based on
sales data (Final Act. 7—10), but paragraphs 223 and 248 of Sklarz indicate
that the comparative market analysis or appraisal is performed in response to
a user query (see also Sklarz, Fig. 16).
The Examiner reasons in the alternative that the predicted sales price
may be stored in a cache and therefore would not need to be recalculated in
the event of a subsequent query (Final Act. 13; see also Ans. 27—30).
However, in our view, such an event would still be in response to a user
query.
Therefore, we do not sustain the Examiner’s rejection under § 102 of
independent claim 58. For similar reasons, we do not sustain the Examiner’s
rejection under § 102 of independent claim 59.
With respect to the Examiner’s rejection under § 103 of independent
claims 58 and 59, the Examiner reasons that it would have been obvious to
update the AVM values (e.g., in the cache) automatically in the same
4 This argument is made in a section with a heading referring to claim 57,
but it is clear from the context that this applies to independent claim 58 as
well.
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Application 13/294,044
manner as the database is automatically updated in order to provide current
prices to users (see Final Act. 13—14). In our view, this reasoning is
conclusory (i.e., to update in order to provide current information), and, in
any event, it is unclear that the cache information is created independent of a
user query. Therefore, we do not sustain the Examiner’s rejection under
§ 103 of claims 58 and 59 for lack of a prima facie case.
Rejection V (Obviousness over Sklar and Florance)
Claim 57
Unlike independent claims 58 and 59, independent claim 57 contains
an additional recitation relating to geographical mapping to represent the
information, for which the Examiner relies on Florance in combination with
Sklarz, i.e., “an AVM value for at least one of the plurality of residential
properties within the map-like display, wherein each AVM value is pre-
process such that an AVM value for the at least one residential property pre­
exists before a user query of the respective property is performed.” In
particular, the Examiner finds that it would have been obvious to combine
the zip code information of Sklarz 48, 59—60, 162, and Fig. 12) with the
icon map of Florance flflf 347, 348, Fig. 58) in order to prevent information
in a user-friendly format (Final Act. 17—18; Ans. 34—35).
Appellants argue that the heat maps of Sklarz do not display graphic
information of an AVM value (Appeal Br. 52). Appellants are referring to
the description of color-coded maps in paragraph 162 of Sklarz. We agree
with Appellants inasmuch as these maps only reflect ranges of prices for
which homes have sold; they do not show actual AVM values of prices
currently for sale.
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Nor does Florance remedy the deficiency in Sklarz. Florance’s map
in Figure 58 shows a sale price, but paragraph 347 of Florance explains that
the sale price is shown in response to the user dragging the mouse over a
location icon. As such, Florance does not show an AVM value that pre­
exists a user query.
The Examiner determines that the recitations relating to AVM values
“pre-exist[ing]” or being “pre-process” are non-limiting because, according
to the Examiner, it does not affect the structure of the AVM values (Final
Act. 18). However, we disagree with the Examiner’s construction of these
recitations as non-structural because we conclude the recitations are
structural in a time-dependent fashion. In other words, the AVM values
simply do not exist in Sklarz when the user turns on the application until the
user enters a query. Because neither Sklarz nor Florance shows appraisal
values prior to a user query, we do not sustain the Examiner’s rejection
under § 103 of claim 57 for lack of aprima-facie case.
DECISION
The Examiner’s decision to reject claims 57—59 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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