Ex Parte Wierks et al

Patent Trial and Appeal Board

May 11, 2018

13067330 (P.T.A.B. May. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/067,330 05/25/2011
113694 7590
Oblon/Corelogic Inc.
1940 Duke Street
Alexandria, VA 22314
05/15/2018
FIRST NAMED INVENTOR
Jon Wierks
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.
375900US8X 3570
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
05/15/2018 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):
oblonpat@oblon.com
patentdocket@oblon.com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JON WIERKS and SUSAN ALLEN
Appeal2017-000368
Application 13/067,330
Technology Center 3600
Before BRUCE T. WIEDER, AMEE A. SHAH, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 4--11, 14--17, and 19-21, which are all of the
pending claims, under 35 U.S.C. § 101 as being directed to non-statutory
subject matter. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Throughout this Decision, we refer to the Appellants' Appeal Brief ("Br.,"
filed Mar. 1, 2016) and Specification ("Spec.," filed May 25, 2011), and to
the Examiner's Answer ("Ans.," mailed July 20, 2016) and Non-Final Office
Action ("Office Act.," mailed July 10, 2015).
2 According to the Appellants, the real party in interest is "CORELOGIC
SOLUTIONS, LLC." Br. 1.
Appeal2017-000368
Application 13/067,330
STATEMENT OF THE CASE
The Appellants' invention "relates to a property complexity scoring
device and associated methodology and non-transitory computer program
storage device for calculating a complexity score indicating a difficulty level
in determining a property value estimate of a target property." Spec. i-f 1.
Claims 1, 15, and 19 are the independent claims on appeal. Claim 15
(Br. 21-22 (Claims App.)) is illustrative of the subject matter on appeal, and
is reproduced below:
Claim 15: A method for determining a complexity score
of a target property, comprising:
receiving location information of a target property via an
interface;
receiving respective property values of the target property
from each of a plurality of Automated Valuation Models
(A VMs) via the interface;
calculating, with a CPU, a complexity score based on a
combination of the received property values, the complexity
score being one of a plurality of complexity score levels and
indicating a difficulty level in determining a property value
estimate of the target property; and
determining a recommended type of valuation to be
performed on the target property based at least in part on the
calculated complexity score and a range associated with the
calculated complexity score;
wherein the plurality of complexity score levels comprise
at least two of:
a first complexity score level that indicates the property
values received from the A VMs as the recommended type of
valuation,
a second complexity score level that indicates a broker
price opinion (BPO) as the recommended type of valuation,
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a third complexity score level that indicates a standard
manual appraisal as the recommended type of valuation, and
a fourth complexity score level that indicates a special
request manual appraisal as the recommended type of valuation.
ANALYSIS
The Appellants argue claims 4--11, 14--17, and 19-21 as a group. See
Br. 6, 16. We select claim 15 as representative of the group; claims 4--11,
14, 16, 17, and 19-21 stand or fall with claim 15. See 37 C.F.R.
§ 41.37(c)(l)(iv).
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. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 588-89
(2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78-79 (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." Id. (emphasis
added) (citing Mayo, 566 U.S. at 79). If so, the second step is to consider
the elements of the claims "individually and 'as an ordered combination'" to
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determine whether the additional elements "'transform the nature of the
claim' into a patent-eligible application." Id. (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. (alteration in original) (quoting
Mayo, 566 U.S. at 72-73). The Court acknowledged in Mayo, that "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 means or method
that improves the relevant technology or are instead directed to a result or
effect that itself is the abstract idea, and merely invoke generic processes and
machinery, i.e., "whether the focus of the claims is on [a] specific asserted
improvement in computer capabilities ... or, instead, on 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, 1335-36 (Fed. Cir.
2016).
Under the first step of the Alice/ Mayo framework, we find supported
and adopt the Examiner's determination that the claim is directed to "scoring
property" to make a recommendation, which is a fundamental economic
practice and mathematical formula. Office Act. 2; Ans. 3--4.
The Appellants ostensibly do not disagree with the Examiner's
characterization of the claim. See Br. 9. Rather, the Appellants argue that
the claim is not directed to one of the examples of abstract ideas identified
by the Supreme Court in Alice (id.), and that "the claimed features are not
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concepts that have been explicitly identified as abstract ideas" (id. at 10).
According to the Appellants, the Examiner also fails "to indicate how
'property scoring' is equivalent to one of the enumerated categories that
have been identified by a relevant court as being abstract" (id.), and, thus,
the Examiner "has failed to meet its prima facie case for asserting that the
claims are directed to an abstract idea as is required by the USPTO
guidelines" (id. at 11 (referring to the JULY 2015 UPDATE: SUBJECT
MATTER ELIGIBILITY, 80 Fed. Reg. 45429 ("July Guidelines"), issued
July 30, 2015, after the mailing date of the Office Action)). We disagree.
Here, in rejecting the claim under § 101, the Examiner analyzes the
claim using the Mayo/Alice two-step framework. Specifically, the Examiner
looks to the intrinsic evidence of the claim language and determines that the
claim is directed to the abstract idea of "scoring property." Ans. 3--4;
Office Act. 2. The Examiner cites numerous judicial decisions, including
Alice, thoroughly analyzes the decisions, and comprehensively compares the
concept here to those found to be abstract in those decisions. Ans. 5-9,
23-26. For example, we see no error in the Examiner's determination that
the concept of "scoring property" is similar to the abstract idea of
"mitigating settlement risk" in Alice in that both concepts mitigate risk and
are fundamental economic practices long prevalent in our system of
commerce. Ans. 6.
Thus, the Examiner has clearly articulated the reasons as to why the
claim is directed to an abstract idea and has notified the Appellants of the
reasons for the rejection "together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application." 35 U.S.C. § 132. In doing so, the Examiner set forth a
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prima facie case of unpatentability. See In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011); Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(Section 132 "is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection"). We further note that the Examiner has clearly followed the
Office's guidelines.
In response to the Appellants' argument that the "the claims do not
seek to tie up the use of the entire abstract concept to which the limitation is
directed" (Br. 11; see also id. at 12), we note that although the Supreme
Court has described "the concern that drives this exclusionary principle[,
i.e., the exclusion of abstract ideas from patent eligible subject matter,] as
one of preemption" (see Alice, 134 S. Ct. at 2354), characterizing
preemption as a driving concern for patent eligibility is not the same as
characterizing preemption as the sole test for patent eligibility. "The
Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability" and "[f]or this reason, questions
on preemption are inherent in and resolved by the§ 101 analysis." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 134 S. Ct. at 2354). Although "preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility." Id. When considering the claim in accord
with the Mayo/Alice two-step framework, the aforementioned concept and
structure claimed are not sufficiently limiting so as to fall clearly on the side
of patent-eligibility. See Ans. 9.
We find unpersuasive of error the Appellants' argument that the claim
is not directed to an abstract idea because "the specification describes a
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business challenge that is resolved by the claimed invention" (Br. 11) for the
reasons provided by the Examiner in the Answer at pages 10-11. In
particular, we agree with the Examiner that the "the inquiry is not just
whether there is a business challenge resolved by the instant invention, but
whether the business challenge is one rooted in technology, or one where the
proposed solution is merely using computers as a tool." Ans. 11; see also
Enfish, 822 F.3d at 1335-36. The Appellants do not present reasoning or
argument(s) why the Examiner's determination that the problem addressed
and the purported solution provided by the claimed invention do not meet
the inquiry.
We further find unpersuasive of error the Appellants' argument that
"the pending claims are similar to examples of patent-eligible claims
provided [in the July Update]" (Br. 12; see also id. at 13-14) for the reasons
provided by the Examiner in the Answer at pages 11-12. In particular, we
agree that the claimed invention is different from the examples provided in
the July Update because "[t]he first example has computer technology at its
root and is trying to solve a technical problem: computer viruses, unlike the
instant invention which is directed to making a choice between various types
of appraisals" (Ans. 11 ), and the second example was "rooted in computer
technology, and in problems that arose out of computer technology [whereas
t]he instant case only uses computer technology as a tool to provide
information and perform calculations [and t ]he claims are attempting to
solve a problem that arises out of a human need to balance cost and
accuracy/risk" (id. at 12). The Appellants do not present reasoning or
argument(s) why the Examiner's determinations are incorrect.
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Under the second step of the Alice/Mayo framework, we find
supported and adopt the Examiner's determination that the claim limitations,
taken individually or as an ordered combination, do not recite an inventive
concept. See Office Act. 3--4; Ans. 12-22. We are unpersuaded by the
Appellants' arguments to the contrary. See Br. 14--16.
We find unpersuasive the Appellants' argument that the claim is
significantly more because it "recites features which are not well-
understood, routine and conventional such as calculating a complexity score
based on a combination of received property values and determining a
recommended type of valuation to be performed on a target property, where
the complexity score levels indicate various types of recommended
valuations" (Br. 15; see also id. at 16) for the reasons provided by the
Examiner in the Answer at pages 12-22. We note that the Specification
provides that the method is implemented by a generic CPU operating in its
ordinary and conventional manner. See Spec. i-fi-f 14--15, 48-54, Figs. 1, 6;
see also Ans. 13. And, we agree with the Examiner that "[t]here is no
indication that the combination of elements improves the functioning of a
computer or improves any other technology." Id. We further note that the
Appellants do not present reasoning or argument( s) why the Examiner's
determinations regarding the Specification and the judicial decisions relied
upon for support and evidence (see id. at 12-22) are incorrect.
Further, that "the previous rejections are withdrawn and there are no
art rejections for the pending claims" (Br. 16) does not automatically
indicate patent-eligible subject matter under 35 U.S.C. § 101. An abstract
idea does not transform into an inventive concept just because the prior art
does not disclose or suggest it. See Mayo, 566 U.S. at 90.
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"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass'nfor Molecular Pathology, 133 S. Ct.
at 2117; see also Ans. 9-10 (quoting buySAFE, Inc. v. Google, Inc., 7 65
F.3d 1350, 1352 (Fed. Cir. 2014)). Indeed, "[t]he 'novelty' of any element
or steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter." Diamond v. Diehr,
450 U.S. 175, 188-89 (1981); see also Mayo, 566 U.S. at 90 (rejecting "the
Government's invitation to substitute§§ 102, 103, and 112 inquiries for the
better established inquiry under § 101 ").
Based on the foregoing, we are not persuaded that the Examiner erred
in rejecting the claim 15 under 35 U.S.C. § 101. Therefore, we sustain the
rejection of claim 15 and claims 4--11, 14, 16, 17, and 19-21, which fall with
claim 15.
DECISION
The Examiner's rejection of claims 4--11, 14--17, and 19-21 under
35 U.S.C. § 101 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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