Fannie Mae

Patent Trials and Appeals Board

Oct 1, 2020

14095475 - (D) (P.T.A.B. Oct. 1, 2020)

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.
14/095,475 12/03/2013 Zachary Dawson 880417-0130-US00 4601
134795 7590 10/01/2020
MICHAEL BEST & FRIEDRICH LLP (DC)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
LAKHANI, ANDREW C
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
10/01/2020 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):
DCipdocket@michaelbest.com
nbenjamin@michaelbest.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ZACHARY DAWSON, REBECCA ADLER,
PATRIA S. KUNDE, JOHN TREADWELL, WEIFENG WU,
and ERIC ROSENBLATT

Appeal 2020-002652
Application 14/095,475
Technology Center 3600

Before CARL W. WHITEHEAD JR., DAVID M. KOHUT, and
IRVIN E. BRANCH, Administrative Patent Judges.

BRANCH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 75–88. Appeal Br. 1; Non-Final Act. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use “Appellant” to reference the applicant as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
“Fannie Mae.” Appeal Br. 6.
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention is “an automated collateral fraud and risk
detection application . . . [for] determin[ing] whether a final appraised value
of an appraisal was correctly reconciled from comparable properties listed
on the appraisal.” Spec., Abst. Claims 75–77 recite the subject matter
argued on appeal and are reproduced below, with emphases and bracketed
letters (claim 75) added to be consistent with the Examiner (Non-Final Act.
6).
[A] 75. A computer program product embodied on a
non-transitory computer-readable data storage device in a
manner that the computer program product is executable by a
host computing device, the computer program product
comprising:
[B] computer code for electronically receiving, by the host
computing device via a communication infrastructure, an
instruction from a client computing device that commands the
host computing device to acquire an appraisal form data file,
wherein the appraisal form data file is an electronic version
of an appraisal form;
[C] computer code for electronically acquiring, by the host
computing device via the communication infrastructure, the
appraisal form data file from a database after the host
computing device receives the instruction from the client
computing device, wherein the client computing device is at a
physical location other than where the database is sited; and
[D] computer code for electronically extracting, by the host
computing device, reconciliation data from a reconciliation
section of the appraisal form data file after the host
computing device acquires the appraisal form data file from
the database, wherein the computer program product utilizes
pointers to reference a location within the appraisal form data
file in which the reconciliation data is obtained,
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[E] wherein the computer program product utilizes data types
to reference a location of adjusted and indicated values in other
sections of the appraisal form data file when the adjusted and
indicated values are not located within the reconciliation
section of the appraisal form data file.
76. The computer program product of claim 75, further
comprising:
computer code for electronically applying, by the host
computing device, a routine to the reconciliation data in a
manner that permits the host computing device to detect a
condition in the reconciliation data after the host computing
device extracts the reconciliation data from the appraisal form
data file.
77. The computer program product of claim 76, further
comprising:
computer code for electronically applying, by the host
computing device, a heuristic to the condition in a manner that
permits the host computing device to determine whether or not
a final appraised value for a subject property is correctly
reconciled from properties that are comparable to the subject
property.
Appeal Br., Claims App.
Rejections
Claims 77–88 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Non-Final Act. 3–4.
Claims 75–88 stand rejected under 35 U.S.C. § 101 as being directed
to a judicial exception. Non-Final Act. 4–9.
Claims 75 and 76 stand rejected under 35 U.S.C. § 102(a)(1) as being
anticipated by Graboske (US 2011/0258127 A1; published Oct. 20,
2011(hereinafter “Graboske ’127”). Non-Final Act. 9–15.
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Claims 77–81, 83, and 85–88 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Graboske ’127 and Graboske
(US 2008/0004893 A1; published Jan. 3, 2008 (“hereinafter “Graboske
’893”). Non-Final Act. 16–25.
Claims 82 and 84 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Graboske ’127, Graboske ’893, and
Coon (US 2008/0162224 A1; published July 3, 2008). Non-Final Act. 25–
29.
WRITTEN DESCRIPTION
Claims 77–88 stand rejected under 35 U.S.C. § 112(a). Claim 77,
which is a base claim of claims 78–88, recites the following disputed
limitation: “computer code for electronically applying, by the host
computing device, a heuristic to the condition in a manner that permits the
host computing device to determine whether or not a final appraised value
for a subject property is correctly reconciled from properties that are
comparable to the subject property.” The Examiner concludes the claimed
heuristic “encompasses a broad genus of possible ways to apply the
heuristic” and the Specification’s disclosed examples of heuristics do not
show possession of the genus. Non-Final Act. 3–4. Specifically, the
Examiner states (in toto):
The limitation encompasses a broad genus of possible ways to
apply the heuristic, and a genus of possible heuristics. In other
words, the claims encompass any and all ways to perform the
application of any heuristic. This is a generic recitation of how
the result or outcome is achieved.
Generic claim language in the original disclosure does not
satisfy the written description requirement if it fails to support
the scope of the genus claimed. . . . Here, the scope of the
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genus is any and all applications of any and all heuristics.
Claims 69–74 do not further narrow the scope of the heuristic
or how it is applied and therefore cover the same genus as the
independent claims.
. . . The genus is too broad and the specification has not
disclosed a sufficient number of species to show one of skill in
the art that Applicant had possession of the entire genus of
ways to perform those actions.
Id.
Appellant contends the Examiner’s determinations lack fact-findings
about the Specification. Reply Br. 3. Specifically, Appellant contends the
Examiner avoids the following question of fact: “This test involves an
inquiry into the four corners of the specification from the perspective of a
person of ordinary skill. . . . [It] is a question of fact that necessarily varies
depending on the context.” Reply Br. 3 (quoting In re Global IP Holdings
LLC, 927 F.3d 1373, 1377 (Fed. Cir. 2019)). We agree with Appellant.
To establish a prima facie case of unpatentability based on a lack of
written description, the Examiner must “present[] evidence or reasons why
persons skilled in the art would not recognize in the disclosure a description
of the invention defined by the claims.” In re Alton, 76 F.3d 1168, 1175
(Fed. Cir. 1996) (quoting In re Wertheim, 541 F.2d 257, 263 (CCPA 1976)).
A procedural caveat is stated by a judically-adopted portion of the Manual of
Patent Examining Procedure (“MPEP”), as follows:
A general allegation . . . is not a sufficient reason to support a
rejection for lack of adequate written description, but a simple
statement such as ‘Applicant has not pointed out where the new
(or amended) claim is supported, nor does there appear to be a
written description of the claim limitation . . . in the application
as filed” may be sufficient[.]
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Hyatt v. Dudas, 492 F.3d 1365, 1370 n.4 (Fed. Cir. 2007) (stating MPEP
§ 2163.04(I)(B) is a “lawful formulation of prima facie standard for a lack of
written description rejection”); see also MPEP § 2163.04(I)(B)
(Rev. 08.2017, Jan. 2018) at 2100-321 (presenting the statements quoted by
Hyatt). As shown above, this caveat comes with the caution that the
statement “may be sufficient.” Id. Further, it comes with the condition that
“the claim is a new or amended claim . . . and applicant has not pointed out
where the limitation is supported.” Id.
We find the Examiner’s statements are tantamount to the above
“simple statement.” We also find the “simple statement” is insufficient here,
because Appellant has presented Specification paragraphs (cited and quoted
with emphasis) believed to provide written description support (Appeal Br.
12–17). Accordingly, the Examiner must provide reasons why an ordinarily
skilled artisan would not recognize, in the presented paragraphs, a
description of the invention that shows possession of the full claim scope.
That is, the Examiner must do more than categorically state claim 77
“encompasses a broad genus of possible ways to apply the heuristic”
(Non-Final Act. 3–4) and the Specification lacks sufficient examples to
show possession of the genus (id. at 4). The Examiner must—but does not
here—present corresponding findings of fact and support them with
evidence or reasoning.
Furthermore, the Examiner does not provide a claim scope for
consideration against the Specification, but rather states “[t]he limitation
encompasses a broad genus of possible ways to apply the heuristic, and a
genus of possible heuristics” (Non-Final Act. 3–4). Compare In re Steele,
305 F.2d 859, 862 (CCPA 1962) (“Before it can be held that the claims on
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appeal cover ‘a wide range of compositions,’ it is essential to know what the
claims do in fact cover.”). Because the rejection lacks a clear construction
of the limitation in question, we could only speculate whether the limitation
is sufficiently described by the presented Specification paragraphs. We
decline to do so.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claims 77–88 under 35 U.S.C. § 112(a).
To facilitate prosecution, we add that the Examiner’s description of
the claimed “heuristic” is indicative of means-plus-function (“MPF”)
claiming. Ans. 6. The Examiner states: “The [Specification’s] description
of ‘heuristic’ is merely expected results . . . [and] akin to a ‘black box’ in
that one would understand what inputs go in the system and the expected
result, but there is no description of what is happening inside the ‘black
box’.” Id. at 6 (citing Spec. ¶ 37). The Examiner is stating that, in the
context of Appellant’s Specification, “heuristic” is used as a nonce word.
This was a principle issue in the Federal Circuit decision discussed by the
Appeal Brief and Answer—Apple Inc. v. Motorola, Inc., 757 F.3d 1286
(Fed. Cir. 2014). See id. at 1301 (“Depending upon the circumstances,
[‘]heuristic[’] is not necessarily a generic, structureless ‘nonce word or a
verbal construct’ without any meaning, such as ‘mechanism,’ ‘means,’
‘element,’ or ‘widget.’”); Appeal Br. 9–11; Ans. 4–5. If claim 77 uses
“heuristic” as a nonce word, then claim 77 likely constitutes an MPF feature
(for the reasons below) and thus only encompasses its corresponding
structure disclosed by the Specification; i.e., it is interpreted under
35 U.S.C. § 112(f). In that case, claim 77 cannot implicate the written
description requirement of § 112(a). See, e.g., In re Dossel, 115 F.3d 942,
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946 (Fed. Cir. 1997) (An MPF feature does not implicate the written
description requirement.).
The claimed heuristic arises from the following limitations of
claim 77 and intervening claim 76: “detect a condition in the reconciliation
data after the host computing device extracts the reconciliation data from the
appraisal form data file” (claim 76); and “applying . . . a heuristic to the
condition . . . to determine whether or not a final appraised value for a
subject property is correctly reconciled from properties that are comparable
to the subject property” (claim 77). The limitations only require that the
claimed heuristic determine, from a detected condition of the extracted
reconciliation data, whether the appraised value of a property was correctly
reconciled from comparable properties. Thus, if “heuristic” is used as a
nonce word, the limitations “merely state[] the expected result and not how
the system goes about determining” the result. Ans. 5. That is, the
limitations would only require the above “determine” function—not any
steps or structure for achieving the function. See Manual of Patent
Examining Procedure (MPEP) § 2181 (9th ed. 2018) (in-depth instructions
for identifying an MPF feature).
The possible MPF drafting of claim 77 is further apparent from the
Apple decision. Apple’s claimed “heuristics” limitations were not construed
as MPF features, but only because of the claim’s and Specification’s
descriptions of the recited heuristics (757 F.3d at 1301–03) and a
now-defunct “strong presumption” against MPF claiming (id. at 1300,
1304). See also Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349
(Fed. Cir. 2015) (“[We] expressly overrule [Apple’s] characterization of the
presumption[—a limitation lacking the word ‘means’ is not an MPF
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feature—]as ‘strong.’ We also overrule the strict requirement of ‘a showing
that the limitation essentially is devoid of anything that can be construed as
structure.’”).2 Because of the descriptions, the Apple court could discern
“the limitation’s operation” when construing it in view of the Specification.
Id. at 1300; see also id. at 1301 (“We need not decide here whether the term
‘heuristic,’ by itself, connotes sufficient structure to maintain the
presumption against means-plus-function claiming[.] . . . [T]he
claim language and specification disclose the heuristics’ operation . . . ,
including the inputs, outputs, and how certain outputs are achieved.”).
The Examiner should consider whether claim 77, in view of the
Specification, requires sufficient structure for performing the claimed
heuristic’s function. See, e.g., Spec. ¶ 79 (“With regard to the . . . heuristics,
. . . the descriptions . . . should in no way be construed so as to limit the
claims.”). The Examiner should also consider whether claim 77 recites the
“heuristic” in a manner similar to instances where courts have interpreted
claimed logic, modules, etc., as MPF features. See, e.g., Williamson, 792
F.3d at 1348–51 (Fed. Cir. 2015) (overruling the “strong presumption” of
Apple and then interpreting a claimed “distributed learning control module”
as a MPF feature); Grecia v. Samsung Electronics America, Inc.,
780 Fed. Appx. 912 (2019) (interpreting a claimed “customization module”
as an MPF feature in view of Williamson and Apple); Thought, Inc. v.
Oracle Corp., No. 12-CV-05601-WHO, 2014 WL 5408179, at *18–19

2 Expressly overruling the corresponding determinations of Lighting World,
Inc. v. Birchwood Lighting, Inc., 382 F.3d 1354, 1358 (Fed. Cir. 2004),
Inventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350,
1358 (Fed. Cir. 2011), Flo Healthcare Solutions, LLC v. Kappos, 697 F.3d
1367, 1374 (Fed. Cir. 2012), and Apple, 757 F.3d at 1297 (Fed. Cir. 2014).
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(N.D. Cal. Oct. 22, 2014), aff’d, 698 F. App’x 1028 (Fed. Cir. 2017)
(interpreting claimed “computer logic” as an MPF feature in view of Apple
and citing similar lower-court interpretations of claimed logic and modules).
ELIGIBILITY
All claims (75–88) stand rejected under 35 U.S.C. § 101 as being
directed to a judicial exception. We select claim 75 as representative.
37 C.F.R. § 41.37(c)(1)(iv) (representative claims); Appeal Br. 18
(“[C]laims 75–88 stand or fall together.”). For the following reasons, we are
unpersuaded of error in this rejection of claim 75.
Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217−18 (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75−77 (2012)). In accordance
with that framework, we first determine what concept the claim is “directed
to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third party
to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
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Concepts determined to be abstract ideas, and thus patent-ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219−20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594−95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent-eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden,
56 U.S. 252, 267−68 (1853))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim ”seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace
that an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
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elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
PTO Guidance
The PTO provides guidance for 35 U.S.C. § 101. USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Guidance”). Under the Guidance, we first look to whether the
claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, and mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)−(c), (e)−(h)).
84 Fed. Reg. at 52−55. Only if a claim (1) recites a judicial exception and
(2) does not integrate that exception into a practical application, do we then
conclude the claim is directed to a judicial exception (id. at 54) and look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
Id. at 56.
Step 1: Does Claim 75 Fall Within a Statutory Category?
There is no dispute that the claimed subject matter falls within a
35 U.S.C. § 101 category of patentable subject matter. See Guidance,
84 Fed. Reg. at 53−54 (“Step 1”); Non-Final Act. 6 (“[C]laims 75–88 are
directed to a manufacture.”).
Step 2A(1):3 Does Claim 75 Recite Any Judicial Exceptions?
We agree with the Examiner that claim 75 recites—and, more
particularly, describes—judicial exceptions. See October 2019 Patent
Eligibility Guidance Update at 1 (meaning of “describe”), available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_
update.pdf; see also 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the

3 The Guidance separates the enumerated issues (1) to (4) (see supra 6–7)
into the following Steps 2A(1), 2A(2), and 2B:
[T]he revised procedure . . . focuses on two aspects [of whether
a claim is “directed to” a judicial exception under the first step
of the Alice/Mayo test (USPTO Step 2A)]: (1) [w]hether the
claim recites a judicial exception; and (2) whether a recited
judicial exception is integrated into a practical application.
[W]hen a claim recites a judicial exception and fails to integrate
the exception into a practical application, . . . further analysis
pursuant to the second step of the Alice/Mayo test (USPTO
Step 2B) . . . is needed . . . in accordance with existing USPTO
guidance as modified in April 2018.[footnote omitted]
84 Fed. Reg. at 51.
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public of the Guidance Update). Specifically, we agree the bold portions of
claim 75 (as reproduced supra 2–3) encompass “instructions from a client to
acquire appraisal data . . . and extract reconciliation information from the
appraisal data” (Non-Final Act. 6). We further agree the bold portions
thereby encompass “a fundamental economic practice . . . of mitigating the
risk of erroneous appraisal reports[] and a commercial or legal interaction
based on the appraisal form” (id.). We add that these concepts fall under the
following judicial exception recognized by the Guidance: “(b) Certain
methods of organizing human activity—fundamental economic principles or
practices ( . . . mitigating risk); commercial or legal interactions
( . . . marketing or sales activities or behaviors; business relations).”
Guidance 84 Fed. Reg. at 52.
We further add that the italicized portions of claim 75’s [D] and [E]
limitations (supra 2–3) encompass mental processes to the extent appraisers
must mentally (e.g., when working ‘pen-and-paper’) “reference a location
within the appraisal form . . . in which the reconciliation data is obtained”
and “reference a location of adjusted and indicated values in other sections
of the appraisal form . . . when the adjusted and indicated values are not
located within the reconciliation section of the appraisal form data file.”
These concepts fall under the following judicial exception recognized by the
Guidance: “(c) Mental processes—concepts performed in the human mind
( . . . observation, evaluation, judgment, opinion).” Guidance 84 Fed. Reg.
at 52 (footnote omitted); see also id. at n.14 (addressing “pen and paper”
processes).
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Step 2A(2): Are the Recited Judicial Exceptions
Integrated Into a Practical Application?
We agree with the Examiner that claim 75’s additional elements do
not integrate the above judicial exceptions into a practical application.
See Guidance, 84 Fed. Reg. at 53 (describing a “practical application” as a
“meaningful limit on the [recited judicial exceptions], such that the claim is
more than a drafting effort designed to monopolize the [exceptions]”);
id. at 55 (“exemplary considerations . . . indicative [of] a practical
application”). Specifically, we agree the non-bold limitations of reproduced
claim 75 (supra 2–3) add the following features:
[The computer program product] of limitation A[,] as well as
[the] communication infrastructure and client computing device
[of] limitation B, . . . are recited at a high level of generality.
The portions of limitations . . . D[] and E that have been
formatted in italics . . . do not limit the claim scope because
they do not require any steps or functions to be performed[.]
. . .
Furthermore, the claim as a whole . . . instruct[s] generic
computing devices to carry out [operations that] are shown to
be [judicial exceptions].
As such, the claim as a whole read[s] as an instruction to
perform [judicially-excepted activity] by “applying it” on the
generic devices. As an ordered combination (along with
modifiers such as “electronic” version of the appraisal form)[,]
the additional elements establish a technological environment,
but . . . ha[ve] no meaningful impact on the [judicially-excepted
activity].
Non-Final Act. 7 (paragraphing added).
We add that the italicized portions of claim 75’s [D] and [E]
limitations (supra 2–3) recite mere printed matter of the computer program
product (and, as stated for Step 2A(1), also recite a mental process). See
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In re Distefano, 808 F.3d 845, 850–51 (Fed. Cir. 2015) (Printed matter, i.e.,
“claimed for what it communicates,” has no patentable weight unless
functionally or structurally related to the claimed invention.); Praxair
Distribution, Inc. v. Mallinckrodt Hosp. Prod. IP Ltd., 890 F.3d 1024, 1033
(Fed. Cir. 2018) (“Because claim limitations directed to mental steps may
attempt to capture informational content, they may be considered printed
matter lacking patentable weight[.]”). The italicized portions do not restrict
a claimed operation, but rather only recite that a “pointer” and “data types”
reference a location. There is no claimed processing of the pointer or
data types. Compare In re Lowry, 32 F.3d 1579, 1583 (Fed. Cir. 1994)
(“The printed matter cases have no factual relevance where . . . the
claims require[] that the information be processed . . . by a machine, [i.e.,]
the computer.” (internal quotation mark omitted)). The pointer and data
types are merely information stored by the computer program product. See
id. (“Lowry does not claim merely the information content of a memory.”).
We also add our disagreement with the Examiner’s finding that the
italicized portion of claim 75’s [C] limitation (supra 2) does not carry
patentable weight. Non-Final Act. 7. This portion, by reciting “the client
computing device is at a physical location other than where the database is
sited,” restricts the claimed acquiring step by restricting where the host
acquires the appraisal form data file. See Distefano, 808 F.3d at 851 (“[T]he
Board erred in finding that the origin of the web assets constituted printed
matter . . . and erred in assigning the origin no patentable weight.”).
However, as explained in our below discussion of MPEP § 2106.05(a)–(c)
and (e)–(h), the italicized portion of claim 75’s [C] limitation adds only a
ubiquitous feature a client/server-database architecture and is accordingly
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inconsequential. See Guidance 84 Fed. Reg. at 55, nn.25, 27–32 (citing
these MPEP sections).
1. MPEP § 2106.05(a)
MPEP § 2106.05(a) concerns “Improvements to the Functioning of a
Computer or To Any Other Technology or Technical Field.” MPEP
at 2100-50. Specifically, it concerns “whether the claim purports to improve
computer capabilities or, instead, invokes computers merely as a tool.”
Id. at 2100-51–52. Having reviewed Appellant’s claim 75, Specification,
and arguments, we find no indication that the invention improves computer
capabilities. And rather, we find the claimed computer technology merely
allocates the claimed operations to a ubiquitous client/server-database
architecture. See Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811
F.3d 1314, 1324–25 (Fed. Cir. 2016) (“[T]he claims add only generic
computer devices such as an interface, network, and database[, which]
. . . do not satisfy the inventive concept requirement.” (quotation marks and
citations omitted)). Specifically, the claimed host is a server computer that
provides services; it acquires a real estate appraisal form and then extracts
the form’s reconciliation data. See Spec. ¶¶ 1–15 (invention’s purpose).
The claimed client is a remote client computer that instructs the host/server
to acquire the appraisal form. The claimed database is the storage location
of the appraisal form and not part of the client computer (it is ostensibly,
though not claimed as such, a database of the host). Accordingly, and
consistent with the claim’s generic (i.e., nondescript) recitations of the host
(“host computing device”), client (“client computing device”), database
(“database”), and their connectivity (“communication infrastructure”), the
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claimed computer technology is merely a generic client/server-database
architecture.
Appellant contends the claimed computer devices operate in an
unconventional manner and, in support, compares claim 75 to a
patent-eligible claim of Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288 (Fed. Cir. 2016). Appeal Br. 18–20. We are unpersuaded
because, though Amdocs found a collection of generic computer devices was
patent-eligible because it operated in an unconventional manner (id. at
1300–01), Appellant does not show claim 75’s computer devices operate in
an unconventional manner. Appellant merely identifies some similarities
between claim 75 and the Amdoc’s claim—never explaining how these
similarities show that claim 75’s computer devices operate in an
unconventional manner. As Amdocs explains with respect to its compared
claim 1 (841 F.3d at 1299), the Federal Circuit has found both eligibility and
ineligibility of “somewhat facially-similar claims” (id. at 1300) and the
eligibility of Amdoc’s claim 1 turned on a narrow interpretation of its terms
that embodied an unconventional use of computer technology (id. at 1300–
01). Appellant’s arguments show, at most, claim 75 and the compared
Amdoc’s claim are also somewhat facially-similar (which, as stated, is not
alone persuasive).
Appellant also contends the Examiner “wantonly disregards the
express structural electronic devices and networks . . . [of] claim 75”
(Appeal Br. 21) and “fails to provide any objective evidence sufficient to
define a ‘generic computer’” (id. at 23) in finding the claimed computer
devices “amount[] to no more than an instruction to use . . . generic
computers and [a] network as a tool to carry out the judicial exception” (id.
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at 22 (quoting Non-Final Act. 7)). We are unpersuaded because, as the
Examiner finds, the claimed computer devices are indeed generic (i.e.,
nondescript). Non-Final Act. 7. Also, as the Examiner further finds, the
Specification provides generic examples of the claimed computer devices
and even indicates the inventors did not contemplate specific (much less
unconventional) computer technology. Id. (citing Spec. ¶¶ 16–20); see also,
e.g., Spec. ¶ 20 (“[T]he exemplary components . . . are not intended to be
limiting.”). There is simply no indication that claim 75 sets forth
unconventional computer technology. See Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1322 (Fed. Cir. 2016) (“The district court
erred in relying on technological details set forth in the patent’s specification
and not set forth in the claims[.]”).
2. MPEP § 2106.05(b) and (c)
MPEP § 2106.05(b) and (c) respectively concern use of a “Particular
Machine” and “Particular Transformation.” MPEP at 2100-54, 56
(transformation must be “of an article”). We find no indication, and
Appellant does not contend, the invention uses a particular machine or
performs a particular transformation.
3. MPEP § 2106.05(e)
MPEP § 2106.05(e) concerns “Other Meaningful Limitations.”
MPEP at 2100-62. Specifically, it concerns whether the claim ”limitations
[go] beyond generally linking the use of the judicial exception to a particular
technological environment.” Id. It also describes, as an example of
limitations falling short of this threshold, a “data processing system and
communications . . . [that] merely linked the use of the abstract idea to . . .
computers[.]” Id. (citing Alice, 573 U.S. at 226). We find the claimed
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computer technology merely links the invention to data processing and
communication—namely, to a client, server, and database.
4. MPEP § 2106.05(g)
MPEP § 2106.05(g)4 concerns “Insignificant Extra-Solution
Activity.” MPEP at 2100-67–69. Specifically, it concerns whether “the
additional elements add more than . . . activities incidental to the primary
process or product.” Id. at 2100-67. We find the claimed computer
technology is merely incidental to the invention’s primary aim of
“determining whether a final appraised value reflects a value indicated by
comparable properties” (Spec. ¶ 11). For example, the claimed allocation of
activities to a host, client, and database is a natural consequence of offering
e-commerce services. See Intellectual Ventures I LLC v. Erie Indem. Co.,
850 F.3d 1315, 1329 (Fed. Cir. 2017) (addressed by MPEP § 2106.05(g) at
2100-68)) (describing “token post solution components” as a “natural
consequence of carrying out the abstract idea in a computing environment”).
5. MPEP § 2106.05(h)
MPEP § 2106.05(h) concerns “Field of Use and Technological
Environment.” MPEP at 2100-69. Specifically, it concerns whether an
industry-specific claim limitation is “integrated into the claim” or rather
does “not alter or affect how the process steps of calculating . . . were
performed.” Id. at 2100-70. We find no indication that claim 75’s
industry-specific limitations alter how the invention performs the claimed
operations. For example, we find no difference between the claimed
“extracting . . . [of] reconciliation data from a reconciliation section of the

4 Because part (f) recommends to first address the other considerations (id. at
2100-64), we address part (f) after parts (g) and (h).
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appraisal form data file” and extracting other types of information from
forms and files.
6. MPEP § 2106.05(f)
MPEP § 2106.05(f) concerns “Mere Instructions To Apply An
Exception.” MPEP at 2100-63. Specifically, it concerns the “particularity
or generality of the application of the judicial exception.” Id. at 2100-66–67.
We address this consideration with reference to McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), which is twice
cited by MPEP § 2106.05(f) and addresses a patent-eligible software
implementation of an abstract idea (McRO, 837 F.3d at 1307, 1316).
Equating an abstract idea to a “result,” McRO held the claim patent-eligible
because it recites a “means” sufficiently specific to prevent preemption.
Id. at 1314 (“The preemption concern arises when the claims are not directed
to a specific invention and instead . . . abstractly cover results where it
matters not by what process or machinery the result is accomplished.”). In
holding the claim overcame this concern, McRO identified a claimed means
(“first set of rules”) that applied unconventional data (“a keyframe at a point
that no phoneme is being pronounced,” i.e., at a “phoneme sub-sequence”)
to the abstract idea (use of “morph-weights” to lip-synchronize animation)
and thereby prevented preemption of the abstract idea. Id. at 1306–07, 1311,
1314–15. Whereas this means of McRO’s claim prevented preemption of
the recited abstract idea, we find no indication that claim 75 prevents
preemption of the recited judicial exceptions. And rather, there is a plain
risk that claim 75 would preempt use of a client/server-database
architecture—a basic tool of modern commerce—to acquire an appraisal
form and extract reconciliation data from the form.
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Step 2B: Does Claim 75 Recite Anything That Is
Beyond the Recited Judicial Exceptions and Not a Well-Understood,
Routine, Conventional (“WURC”) Activity?
We agree with the Examiner that claim 75 does not recite any feature
that neither constitutes a judicial exception nor is WURC. 84 Fed. Reg. at
56. Specifically, we agree:
The generality of the [claimed] additional elements is consistent
with Applicant’s specification at 0016-22[,] . . . amount[ing] to
no more than an instruction to use the generic computers and
network as a tool to carry out the judicial except[ed activities].
. . . The same analysis applies here in 2B, i.e., mere
instructions to apply an exception on a generic computer cannot
integrate judicial exception into a practical application at Step
2A or provide an inventive concept in Step 2B.
Non-Final Act. 8. We also agree that, even assuming the italicized portions
of claim 75’s [D] and [E] limitations carry patentable weight, the included
“pointers” and “data types” are recited only as a “generic technological
element.” Ans. 9 (citing Spec. ¶ 47 and an “IBM definition” of a “pointer”);
see also Spec. ¶ 47 (stating “data types[] such as pointers” and thereby
teaching the claimed “data type” may be a “pointer”). Because all of the
claimed additional elements are generic computer devices and data, we
further agree there is no need for evidence that the claimed additional
elements were WURC. Ans. 9.
We add that the claimed additional elements perform only basic
computer functions such as processing data, storing data, executing
instructions, and receiving or transmitting data over a network. Per MPEP
§ 2106.05(d), these basic functions are WURC when claimed in a merely
generic manner as here. See MPEP § 2106.05(d)(II) at 2100-60–61 (list of
computer functions judicially-recognized as WURC); see also Bascom Glob.
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Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349
(Fed. Cir. 2016) (mere use of a local client computer, remote server, and
Internet network is WURC); Berkheimer Memorandum § III.A.2 (stating
MPEP § 2106.05(d)(II) is sufficient evidence that a computer function is
WURC).
Appellant contends the claimed “pointer” is neither generic nor
WURC, but rather “connotes a specific type of data recall mechanism” that
is not a generalized use of a computer as a tool. Appeal Br. 26 (quoting
Ex parte Shaouy, Appeal 2016-002093 (PTAB 2017)). In support,
Appellant cites Bascom Global Internet Services v. AT&T Mobility, 827 F.3d
1341 (Fed. Cir. 2016), Enfish, LLC v. Microsoft Corp., 822 F. 3d 1327 (Fed.
Cir. 2016) and Trading Technologies International, Inc. v. CQG, Inc., 675 F.
App’x 1001, 1004 (Fed. Cir. 2017). Appeal Br. 24–26.
We are unpersuaded. First, as discussed supra, the claimed pointer
does not carry patentable weight. Second, even assuming the claimed
pointer carries patentable weight, Appellant does not identify the alleged
“specific . . . mechanism” of a pointer (Appeal Br. 26), much less overcome
the Examiner’s evidence that “pointer” is merely a generic term for data
providing the address of other data (Ans. 9). See also In re Baxter Travenol
Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the function of this
court to examine the claims in greater detail than argued by an appellant[.]”).
Third, the cited case law merely shows that the claimed pointer is not
“specific” for purposes of § 101 unless specific enough to prevent
preemption of the claimed judicial exceptions, which Appellant does not
show. See Bascom, 827 F.3d at 1352 (The claims “do not preempt . . .
filtering content,” but rather “carve out a specific location for the filtering
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system (a remote ISP server).”); Enfish, 822 F.3d at 1339 (The claims
“recited . . . a specific type of data structure . . . confirm[ing] . . . the § 101
analysis has not been deceived by the ‘draftsman’s art.’” (quoting Alice, 573
U.S. at 226)); Trading Techs., 675 F. App’x at 1004–05 (“[S]pecific
technologic modifications . . . generally produce patent-eligible subject
matter.” (emphasis added)).
Accordingly, for the foregoing reasons, we sustain the rejection of
claims 75–88 under 35 U.S.C. § 101.
ANTICIPATION, OBVIOUNESS REJECTIONS
Claims 75–78 stand rejected under 35 U.S.C. §§ 102(a)(1) and 103.
Appellant argues only claim 75 (Appeal Br. 27–37) and contends the
remaining claims ”stand or fall” therewith (id. at 38). For the following
reasons, we are unpersuaded of error in the rejection of claim 75.
Appellant contends “Graboske ‘127 . . . fails to teach that the
processing apparatus (18) receives an instruction from a computing device
(16) that commands the processing apparatus (18) to acquire an appraisal
form data file” (Appeal Br. 29) and thus fails to teach the claimed
“receiving, by the host computing device . . . , an instruction from a client
computing device that commands the host computing device to acquire an
appraisal form data file” (id. at 28). We agree with the Examiner’s response:
Graboske ‘127 teaches that “a computing device 16 may send
the necessary information to the processing apparatus 18, and
the apparatus 18 may then use the information to create an
appraisal report” [0030]. The “instruction” is that computing
device sending the necessary information to the processing
apparatus and the “acquire” aspect is that the apparatus uses the
information to create an appraisal report.
Ans. 10–11. Appellant does not address the Examiner’s response.
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Reply Br. 8–12 (addressing the § 102(a)(1) rejection).
Appellant also contends the Examiner cannot rely on multiple
embodiments of Graboske ‘127 as teaching the claimed “acquiring, by the
host computing device . . . , the appraisal form data file from a database.”
Id. at 30–31. We agree with the Examiner’s response:
Graboske ‘127 does disclose “embodiments” but the
embodiments discussed build off of each other within the same
scope (a system to fill out appraisal forms) building off of each
other. Paragraphs [0022-0029] all have a central concept that
Graboske builds upon each other throughout.
Ans. 11. Appellant only replies that any reliance on a reference’s multiple
embodiments is an “untenable position” for a finding of anticipation
(Reply Br. 9), which is simply incorrect. A reference’s mere use of the word
“embodiment” does not preclude a reference from directing a person of
ordinary skill in the art to use features of those labeled embodiments in a
single device, system, etc.; the reference can nonetheless disclose “the
possible combinability of the embodiments.” Chamberlain Grp., Inc. v.
Techtronic Indus. Co., 935 F.3d 1341, 1350 (Fed. Cir. 2019) (“Because
Weik’s disclosure as to the possible combinability of the embodiments . . . is
less than clear, we agree . . . the jury’s no-anticipation verdict was not
supported by substantial evidence.”); Blue Calypso, LLC v. Groupon, Inc.,
815 F.3d 1331, 1343 (Fed. Cir. 2016) (“This case is distinguishable from Net
MoneyIN because . . . [the reference] explicitly contemplates the
combination of the disclosed functionalities. In addition, . . . [there is a]
factual determination that one of skill in the art would read the reference as
disclosing the ability to combine the tools[.]”). Appellant does not address
the Examiner’s finding that Graboske ’127 directs an artisan to start with a
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central concept and then optionally “build off” the central concept by adding
features of the disclosed embodiments.
Appellant also contends “paragraphs [0022] and [0024] of Graboske
‘127 fail to recite a processing apparatus (18) extracting data from an
appraisal form data file” (Appeal Br. 34) and thus fails to teach the claimed
“electronically extracting, by the host computing device, reconciliation data
from a reconciliation section of the appraisal form data file” (id. at 32).
We agree with the Examiner’s determination:
When . . . a discrepancy exists between the database entries and
URAR version 1 and URAR version 2, it . . . triggers the
reporting function to the appraiser[.] . . . This . . . shows that
the system is extracting data from an appraisal form data file (
. . . Uniform Residential Appraisal Report (URAR) form)[.] . . .
[A]s well[,] . . . the system acquires the mapped information
from the form (extracting data) in order . . . to auto-populate the
database information.
Ans. 12. Appellant only replies that “this assertion in the Examiner's
Answer has been addressed in the Appellant’s [Appeal] Brief on pages 32–
34.” Reply Br. 10. The cited Appeal Brief pages 32–34 do not address the
Examiner’s finding, but rather merely quote the finding, quote Graboske
’127’s applied paragraphs 22 and 24, and then summarily conclude
paragraphs 22 and 24 “fail to recite a processing apparatus (18) extracting
data from an appraisal form data file” (Appeal Br. 34). These statements do
not amount to an argument for consideration on appeal, much less a response
to the Examiner’s finding that Graboske ’127’s determination and reporting
of discrepancies in the Appraisal Report would be understood as extracting
data from the report.
Appellant also contends the Examiner errs by construing the italicized
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portions of claim 75’s limitations [D] and [E] as lacking patentable weight
because “a functional limitation must be evaluated” inasmuch that “the prior
art apparatus must be capable of performing the claimed function.”
Appeal Br. 35. We are unpersuaded because Appellant does not address the
Examiner’s determination that the italicized portions “do not require any . . .
functions to be performed” (Non-Final Act. 13). Moreover, we conclude the
italicized portions indeed do not carry patentable weight (see supra 13–14).
Appellant also contends the Examiner errs by failing to construe the
claimed pointer as a “specific type of data recall mechanism” (id. at 36) and
thus failing to show Graboske ’127 teaches such a pointer (id. at 36–37).
We are unpersuaded for each of three reasons. First, the claimed pointer
does not carry patentable weight. See supra 13–14. Second, Appellant does
not identify the claimed pointer’s “specific . . . mechanism” for our
consideration. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(affirming the anticipation rejection because the appellant “merely argued
that the claims differed from [the prior art], and chose not to proffer a
serious explanation of this difference.”); Baxter, 952 F.2d at 391 (Fed. Cir.
1991) (“It is not the function of this court to examine the claims in greater
detail than argued by an appellant, looking for nonobvious distinctions over
the prior art.”). Third, we agree with the Examiner’s determination that:
“Graboske ‘127 discloses[] ‘the data in the real estate database 12 may be
pre-coded to match certain fields in electronic appraisal forms[.]’ [This]
. . . is the function of a pointer[—]to reference a location within the form.”
Ans. 13 (citing Graboske ’127 ¶ 29).
Accordingly, for the foregoing reasons, we sustain the rejections of
claims 75–88 under 35 U.S.C. §§ 102(a)(1) and 103.
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CONCLUSION
For the foregoing reasons, we affirm the Examiner’s decision to reject
claims 75–88.5
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
77–88 112(a) Written Description 75–88
75–88 101 Eligibility 75–88
75, 76 102(a)(1) Graboske ’127 75–76
77–81, 83,
85–88 103
Graboske ’127,
Graboske ’893
77–81, 83,
85–88
82, 84 103 Graboske ’127, Graboske ’893, Coon 82, 84
Overal
Outcome
77–88

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this Appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED

5 “The affirmance of the rejection of a claim on any of the grounds specified
constitutes a general affirmance of the decision of the examiner on that
claim, except as to any ground specifically reversed.” 37 C.F.R. § 41.50.