Ex Parte Wilson et al

Patent Trial and Appeal Board

Feb 28, 2018

13027114 (P.T.A.B. Feb. 28, 2018)

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.
13/027,114 02/14/2011 James Wilson 06998-P0005C 6172
24126 7590 03/02/2018
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
LINDSEY III, JOHNATHAN J
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
03/02/2018 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):
patentpto@ ssjr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES WILSON, JEFFREY MCNEILL, MICHAEL DAVIS,
MARK SILVA, and GENEVIEVE C. COMBES
Appeal 2016-001116
Application 13/027,114
Technology Center 3600
Before JASON V. MORGAN, JOSEPH P. LENTIVECH, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from a non-final
rejection of claims 1, 3—8, 14, and 16—25.2 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as ZipRealty, Inc. App. Br. 2.
2 Claims 2 and 15 have been cancelled, and claims 9—13 have been
withdrawn. App. Br., Claims App’x.
Appeal 2016-001116
Application 13/027,114
Introduction
Appellants describe the invention as relating to “tracking real estate
agents based on their geographic location and further generating agent
expertise data.” Spec. 1 3 (Field). The Specification discusses a variety of
benefits from accurately tracking, recording, and using information related
to an agent’s visits to properties, such as improving the ability of agents and
their companies to track and use information in an automated manner, and
enabling users to identify agents with appropriate expertise. See Spec. 11 6-
7, 26-40. Claim 1 is illustrative of Appellants’ claims on appeal, shown
here with disputed limitations in italics'.
1. A method, implemented by a computer system
associated with a real estate service, for tracking property visits
of a real estate agent associated with the real estate service, the
method comprising:
receiving geographic coordinates associated with a
mobile device of the real estate agent;
determining a current location of the real estate agent
based on the geographic coordinates received;
matching the current location of the real estate agent with
a specific Multiple Listing Service (MLS) listed property
located at or near the current location of the real estate agent;
determining that the real estate agent has performed a
tour of the specific MLS-listed property based on the matching
of the current location of the real estate agent with the specific
MLS listed property;
based on determining that the real-estate agent has
performed the tour of the specific MLS-listed property,
updating an entry of a database using MLS information about
the specific MLS-listing property, the entry comprising a
plurality of variables, each variable of the plurality of variables
reflecting an expertise of the real estate agent in performing
tours of properties with a certain attribute, the updating of the
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entry comprising incrementing a tracking value maintained for
at least a portion of the plurality of variables[; and]
causing display, on a client device, of expertise
information of the real estate agent based on information stored
in the database.
App. Br. 29 (Claims App’x).
Rejections
Claims 1, 3—8, 14, and 16—25 stand rejected under 35 U.S.C. § 101 as
unpatentably directed to non-statutory subject matter. Non-Final Act. 2—3.
Claims 1, 3, 6, 7, 14, 16, 19, 23, and 25 stand rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Desiderio (US 2003/0064705 Al;
Apr. 3, 2003), Wilson (2011/0275441 Al; Nov. 10, 2011), Cardella (US
2011/ 0078138 Al; Mar. 31, 2011), and the IBM Knowledge Center,
“Quickly Filter Data Using the Filter Drop-down Button,” (Dec. 9, 2010)
(available at www.ibm.com/support/knowledgecenter/SSTQPQ_7.5.0/
com.ibm.swg.im.cognos.impadmin.7.5.0.doc/impadmin_idl2578Quickly
FilterDataUsingtheFilterDrop-dow.html; last accessed Feb. 20, 2018)
(hereafter “IBM”). Non-Final Act. 3—11.
Claims 20-22 and 24 stand rejected under § 103(a) as unpatentable
over Desiderio, Wilson, Cardella, IBM, and Official Notice. Non-Final Act.
11—14.3
3 In the rejections of claims 20, 22, and 24, the Examiner cites Fawaz (US
2010/0082406 Al; Apr. 1, 2010) in support of the proposition for which the
Examiner takes Official Notice. Although the Examiner and Appellants
both summarily characterize the rejection of claim 21 as being based on
Official Notice, the basis of the rejection is that claim 21 recites
nonfunctional descriptive matter. See Non-Final Act. 12—13.
3
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Claims 4, 5, 8, 17, and 18 stand rejected under § 103(a) over
Desiderio, Wilson, Cardella, IBM, and Murchison (US 2007/0266081 Al;
Nov. 15,2007). Non-Final Act. 14-17.
ISSUES
(1) In the 35 U.S.C. § 101 rejection of claim 1, did the Examiner err by
determining the claim is unpatentably directed to an abstract idea
without reciting “significantly more”? See App. Br. 9—17;4 see also
Reply Br. 2—16.
(2) In the 35 U.S.C. § 103(a) rejection of claim 1, did the Examiner err by
finding the prior art teaches or suggests the disputed limitations
identified above in the Introduction? See App. Br. 18—25;5 see also
Reply Br. 16—21.
(3) In the 35 U.S.C. § 103(a) rejection of claims 20—22 and 24, did the
Examiner err in taking Official Notice? See App. Br. 25—26.
ANALYSIS
1. 35 U.S.C. § 101 Rejection of Claim 1
“Issues of patent-eligible subject matter are questions of law and are
reviewed without deference.” CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1369 (Fed. Cir. 2011). To determine if a claim recites
patentable subject matter under 35 U.S.C. § 101, the Supreme Court has set
forth a two-part test. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct.
2347, 2355 (2014).
4 For the § 101 rejection of claims 3—8, 14, and 16—25, Appellants present no
substantive arguments separate from those presented for claim 1.
5 For the § 103(a) rejections of claims 3—8, 14, 16—19, 23, and 25,
Appellants present no substantive arguments separate from those for claim 1.
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A. Part One of the Alice Analysis
“First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice, 134 S. Ct. at 2355. A court must be cognizant that
“all inventions at some level embody, use, reflect, rest upon, or apply laws
of nature, natural phenomena, or abstract ideas” (Mayo Collaborative Servs.
v. Prometheus Lab., Inc., 566 U.S. 66, 71 (2012)), and “describing the
claims at... a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Instead, “the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter.” Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Appellants argue “[t]he Examiner’s assertion that the claims are
‘drawn to an abstract idea’ is unsupported and insufficient” and, thus, fails to
set forth a prima facie case of unpatentability. App. Br. 9 (emphasis
omitted); see id. at 10. Specifically, Appellants contend the Examiner erred
by failing to provide any authority to support the determination that claim 1
is directed to an idea that is well known or abstract. App. Br. 10; see also
Reply Br. 3^4 (arguing failure to provide “substantial evidence” violates the
Administrative Procedures Act), 4—5 (arguing the § 101 rejection is
erroneously conclusory), 5—6 (arguing the Examiner’s failure to cite
“authoritative documentation” is inconsistent with Supreme Court, Federal
Circuit, and Patent Trial and Appeal Board precedent).
Appellants’ arguments are unpersuasive. As the Federal Circuit has
clarified,
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“the prima facie case is merely a procedural device that enables
an appropriate shift of the burden of production.” Hyatt v.
Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). See also In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The Patent and
Trademark Office (“PTO”) satisfies its initial burden of
production by “adequately explaining] the shortcomings it
perceives so that the applicant is properly notified and able to
respond.” Hyatt, 492 F.3d at 1370. In other words, the PTO
carries its procedural burden of establishing a prima facie case
when its rejection satisfies 35 U.S.C. § 132, in “notifying] the
applicant . . . [by] stating the reasons for [its] rejection, or
objection or requirement, 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. That section “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection.” Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (brackets in original).
Examiners may rely on their own technical expertise to describe the
knowledge and skills of a person of ordinary skill in the art. In re Berg, 320
F.3d 1310, 1315 (Fed. Cir. 2003) (Examiners are “persons of scientific
competence in the fields in which they work,” and their findings are
“informed by their scientific knowledge”); see also MPEP § 2141 (II)(C)
(Resolving the Level of Ordinary Skill in the Art) and MPEP § 2144.03 (“an
examiner may . . . rely on ‘common knowledge’ in making a rejection”).
Here, we find the Examiner’s rejection satisfies the initial burden of
production because the Examiner finds and reasons that claim 1 is “drawn to
an abstract idea” as being directed to: (1) “the concept of generating an
agent’s ranking based on a database containing agents’ history” and (2)
“[generating expertise records for real estate agents as they visit properties
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for the purpose of helping prospective clients to determine a suitable client-
agent match is well-known and fundamental practice in real estate and e-
commerce.” Non-Final Act. 2. By setting forth a prima facie case that claim
1 is drawn to an abstract idea, including by citing to relevant precedent, see
Ans. 3—5, the Examiner shifted the burden of response on this issue to
Appellants.
Appellants argue the Examiner “fail[s] to consider the claims as a
whole” and errs by providing “no argument or reasoning with respect to
particular claim elements as why they are found by the Examiner to be
abstract ideas.” App. Br. 11 (emphasis omitted). This is unpersuasive.
There is no requirement to find “particular claim elements ... to be abstract
ideas.” Instead, the question is whether, as a whole, the claim is “drawn to”
an abstract idea. See Alice, 134 S. Ct. at 2352. We agree with the Examiner
that, as a whole, considering all steps and limitations, claim 1 is drawn to the
abstract “concept of generating an agent’s ranking based on a database
containing agents’ history.” Non-Final Act. 2; Ans. 4 (explaining “[t]he
summarization of the claims, ‘generating expertise records for real estate
agents as they visit properties for the purpose of helping prospective clients
determine a suitable client-agent match, ’ clearly demonstrates the examiner
considered the disputed claims as a whole”).
Appellants also argue the claims are not directed to an abstract idea.
App. Br. 12—14; Reply Br. 6—7. Appellants point to the recited requirements
of “matching the current location of the real estate agent with a specific
Multiple Listing Service (MLS) listed property located at or near the current
location of the real estate agent” and “determining that the real estate agent
has performed a tour of the specific MLS-listed property based on the
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matching of the current location of the real estate agent with the specific
MLS listed property” as non-abstract. App. Br. 13; see also id. at 13—14
(contending claim 1 is directed neither to a mathematical formula nor a
fundamental economic practice) and Reply Br. 7 (contending the claim 1 is
unlike the claims at issue in Dealertrack, Inc. v. Huber, 674 F.3d 1315 (Fed.
Cir. 2012)).
We disagree with Appellants. While claim 1 recites specific
limitations such as “geographic coordinates” and an “MLS-listed property,”
we agree with the Examiner that the steps of receiving location information
for determining a real estate agent’s location, matching the location with
MLS-listed properties (i.e., real estate industry standard property
information), updating a database based on the matching, and “causing
display, on a client device, of expertise information of the real estate agent
based on information stored in the database” essentially “describe a []
method for generating expertise records for real estate agents as they visit
properties” (Ans. 4). The technological aspects are conventional, and the
claim steps are akin to other court-identified abstract ideas such as allowing
users to purchase objects during an online activity—i.e., a method of
organizing human activities—and obtaining and comparing intangible
data—i.e., an idea of itself. See Gametek LLC v. Zynga, Inc., No. CV-13-
2546 RS, 2014 WL 1665090, at *1-2, 4-7 (N.D. Cal. 2014), aff’d, 597 F.
App’x 644 (Fed. Cir. 2015).
Claim 1 is unlike the claims at issue in DDR Holdings, LLC v.
Hotels.com L.P., which the Federal Circuit found not to be unpatentably
abstract because they were “necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
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networks” because they addressed a technical issue unique to Internet
website problems, 773 F.3d 1245, 1257 (Fed. Cir. 2014), or those in Enfish,
LLC v. Microsoft Corp., which were “directed to a specific implementation
of a solution to a problem in the software arts,” 822 F.3d 1327, 1339 (Fed.
Cir. 2016). Instead, of being rooted in computer technology or directed to
the software arts, claim 1 recites conventional technologies incidental to
“[generating expertise records for real estate agents as they visit properties
for the purpose of helping prospective clients to determine a suitable client-
agent match,” and thus is drawn to an abstract idea, viz., a “fundamental
practice in real estate and e-commerce.” Non-Final Act. 2.
B. Part Two of the Alice Analysis
Next, we consider the claim limitations “both 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). The Supreme Court has
“described step two of this analysis as a 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. (quotation omitted).
Appellants argue claim 1 recites significantly more than an abstract
idea because it “recites multiple hardware components that are not only
specially-configured to perform particular operations, but also to work
together to achieve the operations defined by the method.” App. Br. 15.
Appellants contend that claim 1 solves a technological problem because
under conventional industry practice, if real estate agents are
engaged in several tours each day, it is often cumbersome for
the agents to record and keep track of the houses they actually
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visit on a given day. An agent would have to painstakingly
maintain a log of all the places she visited and provide such
information to a real estate service management application.
Because of the number of tours an agent performs in a day, the
agent may also potentially miss entering information regarding
some of the houses the agent may have toured.
Id. at 15—16 (citations omitted).
This is unpersuasive. The technology limitations of claim 1 are
simply well known, routine, generic technology features that are incidental
to and do not add significantly more to the abstract idea of “generating
expertise records for real estate agents as they visit properties.” Ans. 4. The
use of generic technology limitations “to lend speed or efficiency to the
performance of an otherwise abstract concept does not meaningfully limit
claim scope for purposes of patent eligibility.” CLS Banklnt 7 v. Alice
Corp. Pty. Ltd., 717 F.3d 1269, 1286 (Fed. Cir. 2013) {aff’dAlice Corp. Pty.
Ltd. v. CLS Bank Int 7, 134 S. Ct. 2347 (2014)).
Appellants contend claim 1 ’s limitations are no more conventional
than those of the claim at issue in DDR Holdings. App. Br. 9—11. This is
unpersuasive. The claim at issue in DDR Holdings was found not to be
directed to an abstract idea, but instead was directed to a “particular Internet-
centric problem”—it recited particular web server technology “to automate
the creation of a composite web page by an ‘outsource provider’ that
incorporates elements from multiple sources in order to solve a problem
faced by websites on the Internet.” 773 F.3d at 1259. Appellants’ analogy
to DDR Holdings is unpersuasive. While claim 1 may automate what
otherwise would be a cumbersome manual process and alleviate agents from
painstakingly logging information, these are benefits of the use of routine
technology for automation, and are not directed to any underlying
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technological improvement. For the same reasons, we also find Appellants’
related arguments unpersuasive. See App. Br. 11—14 and Reply Br. 8—14.
Appellants further contend claim 1 recites significantly more than an
abstract idea under the second prong of Alice because it does not preempt
any basic tools of science or technology. App. Br. 16—17; Reply Br. 15.
Appellants contend claim 1
recites a particular way to determine a current location of a real
estate agent (e.g., “based on the geographic coordinates
received” from the mobile device of the real estate agent), a
particular way for determining the real estate agent has
performed a tour of a property (e.g., based on matching the
current location of the real estate agent with a specific MLS
listed property), a particular way for tracking the expertise of
the real estate agent (e.g., by “updating an entry of a database
using MLS information”), and maintaining information
regarding a particular type of expertise (e.g., “an expertise of
the real estate agent in performing tours of properties with a
certain attribute”).
App. Br. 16.
This is unpersuasive. “[T]he absence of complete preemption does
not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). A claim drawn to an abstract
idea must recite “significantly more.” Alice, 134 S. Ct. at 2358. Limitations
such as “geographic coordinates” broadly encompass virtually any
practicable location-based service technology. “MLS information” is the de
facto standard database for the real estate industry and as a practical matter
does not add significantly more to an abstract idea of using real estate
property information. Claim 1 ’s limitations, taken alone and as an ordered
combination, do not recite significantly more than the abstract idea to which
it is drawn.
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Thus, we sustain the Examiner’s 35 U.S.C. § 101 rejection of claim 1.
For the same reasons we sustain the § 101 rejection of claims 3—8, 14, and
16—25, for which Appellants offer no substantive arguments separate from
those for claim 1.
2. 35 U.S.C. § 103(a) Rejection of Claim 1
A. Determining the Real Estate Agent Performed a Tour
In rejecting claim 1 under pre-AIA 35 U.S.C. § 103(a), the Examiner
finds Wilson teaches “determining that the real estate agent has performed a
tour of the specific MLS-listed property based on the matching of the current
location of the real estate agent with the specific MLS listed property,” as
recited by claim 1. Non-Final Act. 4—5 (citing Wilson || 87, 91—93, 106,
110-12, Figs. 4, 5, 12, 13). Appellants argue the Examiner errs because
“ Wilson concerns a ‘social game’ in which players may ‘check-in’ to houses
offered for sale,” and this check-in process “is not the same as “determining
[a] real estate agent has performed a tour,” as recited. App. Br. 19 (citing
Wilson | 95); see also Reply Br. 17.
Appellants’ argument is unpersuasive. The Examiner finds, and
Appellants do not contest, that Desiderio teaches determining location of a
real estate agent and matching that location with nearby a MLS-listed
property, as recited in the first three steps of claim 1. Non-Final Act. 4
(citing Desiderio 37, 39-41, Figs. 1—4). In view of Desiderio, the “user”
of Wilson, which is directed to a real estate tracking system using MLS
information (see Wilson 13, 11), fairly maps to the “real estate agent” of
claim 1. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986)
(explaining each reference cited by the Examiner must be read, not in
isolation, but for what it fairly teaches in combination with the prior art as a
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whole). Also, we agree with the Examiner that “determining that an agent
has toured a property ... is a conclusion or meaning that the system attaches
to the matching of an agent’s location data with a specific property
location.” Ans. 8 (citing Appellants’ Spec. 143, Fig. 5). In view of
Appellants’ Specification, the broadest reasonable interpretation of claim l’s
requirement for “determining that the real-estate agent has performed a tour
. . . based on matching of the current location of the real estate agent with the
specific MLS listed property” step is that if the real estate agent’s current
location matches that of a specific MLS listed property then there it is
determined that the real estate agent has performed a tour of that property.
Appellants argue the Examiner’s mapping of Wilson’s “check-in” to
“determining that the real estate agent has performed a tour” effectively
ignores words in the claim, such as “tour.” Reply Br. 17. We disagree.
Appellants’ Specification discusses a similar “property check-in” feature
that, based simply on the real estate agent’s location, the “service determines
that the agent is currently at a particular property for touring that property.”
Spec. 129. In other words, Appellants’ Specification equates the agents’
presence at the location with determining the agent has toured the location.
Although the Specification describes the possibility of “additional
verification mechanisms to ensure accuracy of such a determination” (Spec.
129; see also id. 135), we decline to limit the meaning of “determining that
the real estate agent has performed a tour” based on unclaimed requirements
described in Appellants’ Specification. See In re Van Geuns, 988 F.2d 1181,
26 USPQ2d 1057 (Fed. Cir. 1993) (explaining that while claims are
interpreted in light of the Specification, it is inappropriate to read limitations
from the specification into the claims); In re Bigio, 381 F.3d 1320, 1325
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(Fed. Cir. 2004) (“[T]his court counsels the PTO to avoid the temptation to
limit broad claim terms solely on the basis of specification passages.”).
Thus, given the user in Wilson maps to the recited “real estate agent,”
Wilson’s determining the user has checked into a location teaches, or at least
suggests, the recited requirement of “determining that the real estate agent
has performed a tour.”
B. Updating a Database using MLS Information about the Property
Toured by the Real Estate Agent
In the § 103(a) rejection of claim 1, the Examiner finds Cardella, in
view of the teachings of Desiderio and Wilson, teaches the second disputed
limitation of:
based on determining that the real-estate agent has
performed the tour of the specific MLS-listed property,
updating an entry of a database using MLS information about
the specific MLS-listing property, the entry comprising a
plurality of variables, each variable of the plurality of
variables reflecting an expertise of the real estate agent in
performing tours of properties with a certain attribute, the
updating of the entry comprising incrementing a tracking
value maintained for at least a portion of the plurality of
variables,
as recited. Non-Final Act. 5—7 (citing Cardella H 51, 53, 119-22, 157).
Appellants argue the Examiner errs because:
although Cardella discusses calculating “areas of expertise” for
real estate agents, Cardella does not contemplate “determining
the real estate agent has performed a tour” of such a property,
let alone “updating an entry of a database using MLS
information about the specific MLS-listing property toured by
the real estate agent,” based on determining the real estate agent
performed a tour, as recited.
App. Br. 20 (citing Cardella 1157) (further arguing “the ‘areas of expertise’
calculated in Cardella pertain only to an agent’s history of transactions in
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selling or purchasing homes”); see also Reply Br. 18—19. Appellants also
contend Desiderio and Wilson do not remedy the deficiency of Cardella, and
in particular “ Wilson does not contemplate ‘updating an entry of a database
using MLS information about the specific MLS-listing property toured by
the real estate agent.” Id. at 21.
The relevant inquiry is whether the claimed subject matter would have
been obvious to those of ordinary skill in the art in light of the combined
teachings of those references. In re Keller, 642 F.2d 413, 425 (CCPA
1981). As discussed above, the Examiner finds, and we agree, that Wilson,
in view of Desiderio, teaches determining an agent has performed a tour, as
recited. We also agree with the Examiner’s finding that Cardella, in view of
the teachings of Desiderio and Wilson, teaches “updating an entry of a
database using MLS information about the specific MLS-listing property.”
See Non-Final Act. 6—7 (finding and reasoning that in the combination of
elements from the references, “each element merely would have performed
the same function as it did separately, and one of ordinary skill in the art
would have recognized that the results of the combination were predictable”
(citing KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 415—16 (2007))); see
also Ans. 9-10.
Appellants contend that because Cardella teaches determining an
agent’s expertise based on “homes sold by the agent,” therefore “the scope
of Cardella is limited to expertise as it pertains to a transactional history,
and that Cardella does not contemplate retrieving information from ‘check­
in’ data sources such as those provided by Wilson.” App. Br. 24. This is
unpersuasive. Appellants read Cardella too narrowly. Cardella teaches
using databases to match real estate agent experience with potential
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customers. Cardella Title, Abstract. Cardella teaches determining multiple
types of expertise for the agent, such as with particular neighborhoods,
house types, price ranges, etc., and storing this information for subsequent
use in matching customers with agents. See id. ]Hf 157—68. Cardella
specifically teaches using MLS information as part of this database system
for matching agents with customers based on agent expertise. Id. 1103.
Thus, Cardella teaches or at least suggests updating multiple expertise-
related variables using MLS information, as recited. Accordingly, we agree
with the Examiner that the combined teachings of Desiderio, Wilson, and
Cardella render obvious the second disputed limitation.
C. Motivation to Combine Desiderio, Wilson, and Cardella
Finally, with respect to the § 103(a) obviousness rejection of claim 1,
Appellants argue the Examiner errs because there would have been no
motivation for an ordinarily skilled artisan to combine the teachings of
Cardella with the teachings of Desiderio and Wilson. App. Br. 22—24; Reply
Br. 19-21. Specifically, Appellants contend that because there would have
been no motivation to combine Cardella with Wilson because “Cardella
only concerns an expertise of real estate agents as it pertains to the agents’
transactional history,” and “Cardella does not contemplate retrieving
information from ‘check-in’ data sources such as those provided by Wilson.”
App. Br. 23, 24.
The Examiner responds that the rejection does not propose modifying
Cardella with the teachings of Wilson, rather:
“Cardella may further modify the proposed combination of
Desiderio and Wilson references such that the information
management monitors and mines new property information
from the check-in data sources in order to update the real estate
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agent history.” Cardella provides sufficient motivation for the
aforementioned combination of references by teaching the
system may further monitor and mine additional external
sources, which could include check in data sources (such as the
player check in histories described by Wilson at Paragraph
0095).
Ans. 10—11 (quoting Non-Final Act. 6) (further explaining that while
“Cardella may only discuss deriving an agent’s experience in terms of. . .
transactional history, the reference clearly does not limit external sources to
those pertaining only to sold homes” (citing Cardella 1103)).
Appellants reply that Cardella’s discussion of deriving agent expertise
only in terms of transactional history necessarily limits the teachings of
Cardella to use with external sources pertaining only to transactional history.
Reply Br. 20. We disagree with Appellants. It is axiomatic that “[a]
reference must be considered for everything it teaches by way of technology
and is not limited to the particular invention it is describing and attempting
to protect.” EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907 (Fed.
Cir. 1985) (emphasis omitted). Appellants in effect argue Cardella’s
“transactional experience” disclosure focus teaches away from the use of its
teachings with Wilson. A teaching away, however, requires a reference to
actually criticize, discredit, or otherwise discourage the claimed solution, see
In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004), and such has not been
shown to be the case here.
Appellants do not point to any evidence of record that the Examiner’s
combination of teachings from Desiderio, Wilson, and Cardella would be
“uniquely challenging or difficult for one of ordinary skill in the art” or
“represented an unobvious step over the prior art.” Leapfrog Enters. Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
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U.S. at 418—19). Nor have Appellants provided objective evidence of
secondary considerations which our reviewing court guides “operates as a
beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and
Powder Sys., Inc.,125 F.3d 1341, 1352 (Fed. Cir. 2013). The Examiner’s
findings are reasonable because the skilled artisan would “be able to fit the
teachings of multiple patents together like pieces of a puzzle” because the
skilled artisan is “a person of ordinary creativity, not an automaton.” KSR,
550 U.S. at 420-21. We are persuaded the claimed subject matter
exemplifies the principle that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR, 550 U.S. at 416.
D. Obviousness Conclusion
Accordingly, we sustain the § 103(a) rejection of claim 1. For the
same reasons we sustain the rejections of claims 3—8, 14, 16—19, 23, and 25,
for which Appellants present no substantive arguments separate from those
for claim 1. In doing so, as consistent with the foregoing, we adopt as our
own the Examiner’s findings and reasons as set forth in the Non-Final
Action and in the Answer.
3. 35 U.S.C. § 103(a) Rejections of Claims 20—22 and 246
In rejecting claims 20, 22, and 24, the Examiner relies on Fawaz in
combination with Desiderio, Wilson, and Cardella, taking Official Notice
based on Fawaz “that it is old and well known within the computer arts to
use arithmetic to derive one metric from two or more readily available
metrics” (claim 20), “that it is also old and well known in the computer arts
6 Claims 20 and 24 depend from claim 1; claims 21 and 22 depend from
claim 20. App. Br. 34—35 (Claims App’x).
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to display that ranking when searching for a real estate agent” (claim 22),
and “that it is old and well known in the computer arts to apply a criteria
filter and derive a ranking based on the filtered results” (claim 24). Non-
Final Act. 11, 13, 14 (collectively citing Fawaz Figs. 1, 2, | 8). The
Examiner rejects claim 21 because its recited limitation “wherein the
ranking is one of platinum, gold, or bronze” constitutes nonfunctional
descriptive material. Id. at 12—13 (citing MPEP § 211.05).7
Appellants argue the Examiner errs in rejecting claims 20—22 and 24
because “the Examiner has failed to ‘provide specific factual findings
predicated on sound technical and scientific reasoning’ to support taking
Official Notice.” App. Br. 25; see also id. at 26. We disagree with
Appellants. Regarding claims 20, 22, and 24, we agree with the Examiner’s
finding that Fawaz relevantly “discloses features for ranking real estate
agents based on their activities or job performance” by its examples of
“ranking agents primarily in terms of the number of homes sold”. Ans. 12
(citing Fawaz || 20, 25, 28, 34). In other words, Fawaz teaches use of agent
metrics to rank agents. As discussed above, Wilson and Desiderio teach
determining the use of houses toured as a metric for ranking agents. Thus,
the Examiner provides specific factual findings, predicated on sound
technical reasoning, for the rejections of claims 20, 22, and 24. On the
record before us, we agree that Fawaz, in view of Wilson, Desiderio, and
Cardella, and in view of the knowledge of the ordinarily skilled artisan,
would have rendered obvious claims 20, 22, and 24. Ans. 11—13; Non-Final
7 Appellants do not rebut the rejection’s determination that claim 21 recites
nonfunctional descriptive matter that is entitled to no patentable weight. We
agree with the Examiner and summarily sustain the rejection of claim 21.
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Act. 11—14; see Leapfrog v. Fisher-Price, 485 F.3d at 1162; Cheese Sys. v.
Tetra Pak Cheese, 725 F.3d at 1352; KSR, 550 U.S. at 420-21.
Accordingly, we sustain the rejections of claims 20—22 and 24. In
doing so, we adopt the findings and reasons of the Examiner.
DECISION
For the above reasons, we affirm the rejections of claims 1, 3—8, 14,
and 16—25 under 35 U.S.C. §§ 101 and 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).
AFFIRMED
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