Miller, Benjamin

Patent Trials and Appeals Board

Feb 5, 2020

13402118 - (D) (P.T.A.B. Feb. 5, 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.
13/402,118 02/22/2012 Benjamin Miller 11651-0005-00000 5467
108449 7590 02/05/2020
Bookoff McAndrews, PLLC
2020 K Street NW
Suite 400
Washington, DC 20006
EXAMINER
KWONG, CHO YIU
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
02/05/2020 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):
KRoss@bomcip.com
eofficeaction@appcoll.com
usptomail@bomcip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BENJAMIN S. MILLER
____________

Appeal 2018-0082421
Application 13/402,118
Technology Center 3600
____________

Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), the Appellant2 appeals from the
Examiner’s final decision to reject claims 1–25 and 27, which are all the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We note related appeal 2018-008078, application number 14/183,041.
Appeal Br. 3.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Rise
Companies Corp. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The Appellant’s invention “generally relates to computerized systems
and methods for online securitization of illiquid assets. More particularly,
and without limitation, . . . [the invention] relate[s] to computerized systems
and methods for issuing shares in illiquid assets, such as real estate, to
investors, by communicating electronic information over the Internet.”
Spec. ¶ 2.
Claims 1, 11, and 21 are the independent claims on appeal. Claim 1 is
illustrative of the subject matter on appeal, and is reproduced below (with
added bracketing for reference):
1. A computer-implemented method for online
transactions of divided interests in real property, the method
comprising:
[(a)] receiving, over a network and from an owner or agent
of the real property, at an online platform, information relating
to the real property, the information including (i) a visual
representation of the real property; (ii) the location of the real
property; (iii) a development budget for improving the real
property; (iv) a disclosure of risks of investing in the real
property; (v) a disclosure of a financial condition of the real
property; and (vi) a financial value of the real property;
[(b)] automatically generating, using a securitization
engine executing on a processor of the online platform, electronic
promotional material for the real property based on the received
information relating to the real property;
[(c)] receiving or generating, using the processor, an
electronic profile for each of a plurality of individual investors,
each investor profile including a home address or residence of
the respective investor;
[(d)] generating, using the processor, a request for
expressions of interest in purchasing a partial share in or unit of
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an entity that holds an interest in the real property based on the
information relating to the real property;
[(e)] providing, using the processor, the request for
expressions of interest via a web portal to one or more investors
having an electronic profile generated in relation to the web
portal;
[(f)] receiving, using the processor, interest data from a
subset of the investors in response to the request for expressions
of interest from each respective investor of the one or more
investors over the network;
[(g)] generating, using the securitization engine executing
on the processor of the online platform, an offer for purchasing a
share in or unit of an entity that holds an interest in the real
property based on the information relating to the real property;
[(h)] automatically submitting, to a regulatory agency over
the Internet, using the securitization engine executing on the
processor of the online platform, electronic documentation
associated with the generated offer and the real property for
regulatory approval based on the information relating to the real
property;
[(i)] transmitting the offer to at least the subset of investors
over the network, the offer including (i) a visual representation
of the real property; (ii) the location of the real property;
(iii) a disclosure of risks of investing in the real property;
(iv) a disclosure of a financial condition of the real property; and
(v) a price of purchasing the share in or unit of the entity that
holds an interest in the real property, the price being a function
of the financial value;
[(j)] automatically generating a registered investor profile
for each of one or more of the subset of investors, upon the
respective investor requesting a hyperlink containing a secure
key, the hyperlink being transmitted to the investor by electronic
mail;
[(k)] performing server-side form validation and client-
side form validation before validating the registered investor
profile for the one or more investors of the subset of investors;
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[(l)] generating an account activation timestamp
associated with an activation time of the investor’s account upon
successfully generating the registered investor profile and
successfully performing the server-side and client-side form
validation;
[(m)] receiving, over the network, an electronic web
payment from one or more participating investors of the subset
of registered and validated investors, the electronic web payment
being provided in consideration for the share in or unit of the
entity holding the interest in the real property;
[(n)] comparing a timestamp associated with an opening
date of the transmitted offer to either an account activation
timestamp or a timestamp associated receipt of the electronic
web payment from the one or more participating investors, to
determine the respective participating investors’ eligibility to
complete an electronic transaction for the share or unit;
[(o)] automatically executing, in order of first-in-first-out
relative to other participating investors’ electronic payments and
timestamps associated with said electronic payments, a
transaction to transfer to the one or more participating investors
the share in or unit of the entity holding the interest in the real
property;
[(p)] upon automatically executing the transaction,
automatically generating and transmitting, over the Internet,
electronic completion notification to each of the respective
participating investors, the electronic completion notification
comprising indicia identifying the real property market cap and
the transaction closing date; and
[(q)] generating and displaying, via the electronic web
portal, a graphical display of an amount of investment made in
the real property to-date relative to a total amount of investment
made available by the offer.
Appeal Br. 60–62 (Claims App.).
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REJECTIONS
Claims 1–25 and 27 stand rejected under 35 U.S.C. § 101 as being
directed to a judicial exception without significantly more.
Claims 1–25 and 27 stand rejected under pre-AIA 35 U.S.C. § 112,
first paragraph.

OPINION
Patentable Subject Matter
The Appellant argues the claims as a group. See Appeal Br. 44. We
select claim 1 as representative of the group, with claims 2–25 and 27
standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
35 U.S.C. § 101 Framework
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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
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
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(2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept
of hedging, or protecting against risk.”).
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.”).
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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
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 (internal quotation marks
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. (alterations in original) (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.
After the Appellant’s Briefs were filed and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (“USPTO”) published revised
guidance on the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised
Guidance”). That guidance revised the USPTO’s examination procedure
with respect to the first step of the Mayo/Alice framework by (1) providing
groupings of subject matter that are considered an abstract idea; and (2)
clarifying that a claim is not “directed to” a judicial exception if the judicial
exception is integrated into a practical application of that exception. Id. at
50. The 2019 Revised Guidance, by its terms, applies to all applications,
and to all patents resulting from applications, filed before, on, or after
January 7, 2019. Id.3 Under the 2019 Revised Guidance, we first look to
whether the claim recites:

3 The 2019 Revised Guidance supersedes MPEP § 2106.04(II) and also
supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet
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(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then 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
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed Reg. at 54, 56.
Preliminary Matter
Before turning to the Mayo/Alice framework, we address the
Appellant’s contention that the Examiner’s rejection is in error because the
Examiner fails to set forth a prima facie case of subject matter ineligibility.
See Appeal Br. 44–46. Specifically, the Appellant argues that the
Examiner’s analysis is conclusory and does not provide sufficient evidence,
support, or articulated reasoning. See id. We disagree.
In rejecting the claims under § 101, the Examiner analyzes the claims
using the Mayo/Alice two-step framework. Specifically, the Examiner looks
to the language of claim 1, as representative of all of the claims, identifies

Identifying Abstract Ideas.” See 2019 Revised Guidance, 84 Fed. Reg. at 51
(“Eligibility-related guidance issued prior to the Ninth Edition, R-08.2017,
of the MPEP (published Jan. 2018) should not be relied upon.”).
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particular specific limitations, and determines that all of the claims are
“directed to securitizing illiquid asset,” which is a “fundamental economic
practice and similar to the concepts that have been identified as abstract by
the courts.” Final Act. 5 (citing cases).4 The Examiner further determines
that the additional elements of the claims, taken alone and as an ordered
combination, do not ensure that the claims amount to significantly more than
the abstract idea. See id. at 5–6; Ans. 4–5. Thus, the Examiner has clearly
articulated the reasons for the rejection and has notified the Appellant 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. And, we find that, in doing so, the
Examiner set forth a 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.”).
Step One of the Mayo/Alice Framework
Reciting a Judicial Exception
Under the first step of the Mayo/Alice framework and Step 2A,
Prong 1 of the 2019 Revised Guidelines, 84 Fed. Reg. at 54, the Examiner
determines that claim 1 is “directed to securitizing illiquid asset,” which is a
“fundamental economic practice and similar to the concepts that have been
identified as abstract by the courts.” Final Act. 5. When viewed through the

4 We note that under the 2019 Revised Guidance (84 Fed. Reg. 50, 52–54),
there is no requirement that the Examiner must cite to judicial decisions as
evidence that the claims are directed to an abstract idea.
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lens of the 2019 Revised Guidance, the Examiner’s analysis depicts the
claimed subject matter as a “[c]ertain method[] of organizing human
activity—fundamental economic principles or practices (including hedging,
insurance, mitigating risk).” 2019 Revised Guidance, 84 Fed. Reg. at 52
(footnote omitted).
The Appellant contends that the Examiner “merely generalized and
mischaracterized the language of the claim[], and asserted that the language
constitutes an abstract idea.” Appeal Br. 46. The Appellant argues that the
claim “does not recite an abstract idea,” but is “narrowly tailored to a mobile
device or PC” that performs the recited limitations. Id. at 46–47. The
Appellant characterizes the claim as being “directed to a specific and
uniquely-described technological solution to problems in traditional real-
estate investment trusts and securitization engines,” which is not “a mere
fundamental economic or longstanding commercial practice because
crowdfunding real-estate is an inventive concept that has only been viable
for last few years, and its analog predecessor, operated in significantly
different fashion as described in paragraph [0007] of the specification.” Id.
at 47. For the following reasons, we disagree.
Before determining whether the claim at issue is directed to an
abstract idea, we first determine to what the claim is directed. The Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the specification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
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in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
Here, it is clear from the Specification, and the claim language, that the
focus of claim 1 is on an abstract idea, and not on any improvement to
technology and/or a technical field.
The Specification provides for “systems and methods for online
securitization of illiquid assets.” Spec. ¶ 2, Title. In the “Background”
section, the Specification discusses that the prior art way of raising capital
for an asset typically takes place before a contract, takes many months,
creates uncertainty for the funder as to which assets are purchased, requires
arduous meetings and extensive documents, rarely gives enough time for the
buyer to perform due diligence, and results in funds and investors sitting
with excess inventory of committed capital. See id. ¶ 3. Smaller deals
suffer the same problems and lack the ability to raise capital before
contracting their assets, so they typically raise money inefficiently from
friends or family. See id. ¶ 4. Moreover, residents and customers of an asset
do not usually have the opportunity to invest in properties near their
activities, though they are the ones most likely to appreciate, contribute, and
participate in the value, growth, and participation in the property investment.
See id. ¶ 5. Further, the prior art process of submitting for regulatory
approval or exemption “is extremely costly, slow, and otherwise
burdensome.” Id. ¶ 7. The Specification posits that investors “would prefer
a medium whereby investments are provided to them and funded ‘just in
time’ giving them more control of asset selection and liquidity” (id. ¶ 6), and
an owner or tenant of the real estate “typically wishes to understand the
potential demand for his offering, and thereby gauge the amount they could
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raise, the price for the security, and nature of the investor demand” (id. ¶ 7).
The invention aims to overcome one or more of these problems by providing
“computerized systems and methods for online securitization of illiquid
assets.” Id. ¶ 8.
Consistent with the disclosure, claim 1 recites “[a] computer-
implemented method for online transactions of divided interests in real
property,” comprising the steps of (1) receiving data, i.e., receiving property
information, a profile, interest data, and payment information, steps (a), (c),
(f), and (m), respectively; (2) generating data based on received or
determined information, i.e., generating promotional material, investor
profiles a request for expressions, an offer to purchase, an account activation
timestamp, an electronic completion notification, and a graphical display of
investment amounts, limitations (b), (c), (d),(g), (j), (l), (p), and (q);
(3) providing and transmitting data, i.e., providing a request for expressions,
submitting data to an agency, and transmitting the offer, limitations (e), (h),
and (i), respectively; (4) analyzing data, i.e., performing form validations
and comparing a timestamp to determining eligibility, limitations (k)
and (n), respectively; (5) executing a transaction to transfer a share,
limitation (o); and (6) displaying data of investment amounts, limitation (q).
See Appeal Br. 62–65 (Claims App.). The limitations are recited
functionally without any implementation details.
When considered collectively and under the broadest reasonable
interpretation, the limitations of claim 1 recite a method for online
securitization of illiquid assets by conducting online transactions for divided
interests in property by receiving, generating, providing, transmitting,
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analyzing, executing, and displaying data,5 which is an abstract idea of a
“[c]ertain method[] of organizing human activity— fundamental economic
principles or practices (including hedging, insurance, mitigating risk).”
2019 Revised Guidance, 84 Fed. Reg. at 52.
The courts have held similar concepts to be abstract. For example,
our reviewing courts have held abstract the concepts of “intermediated
settlement, i.e., the use of a third party to mitigate settlement risk [also
known as a clearing house]” in Alice, 573 U.S. at 219, of “hedging, or
protecting against risk” in Bilski, 561 U.S. at 611, of “placing an order based
on displayed market information” in Trading Technologies International,
Inc. v. IBG LLC, 921 F.3d 1084, 1092 (Fed. Cir. 2019), of “a real estate
investment tool designed to enable tax-free exchanges of property” in Fort
Properties, Inc. v. American Master Lease LLC, 671 F.3d 1317, 1322 (Fed.
Cir 2012), of “allocating investment returns to different investors within a
common investment fund” in In re Greenstein, 774 F. App’x 661, 664 (Fed.
Cir. 2019), and of “prospective evaluation of the market (over some
specified period of time) . . . to help investors automatically choose the best
performing index/financial instrument over that period” in In re Chorna, 656
F. App’x 1016, 1020 (Fed. Cir. 2016). Thus, we disagree that the Examiner
“merely generalized and mischaracterized the language of the claims, and
asserted that the language constitutes an abstract idea of a ‘fundamental
economic practice’.” Appeal Br. 46.

5 We note that “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board’s “slight revision of its abstract idea analysis
does not impact the patentability analysis.” Id. at 1241.
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Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, in determining whether the claim is directed to this abstract
idea, we next consider whether the claim recites additional elements that
integrate the judicial exception into a practical application
Integration into a Practical Application
Under Step 2A, Prong 2 of the 2019 Revised Guidance, 84 Fed. Reg.
at 54, we look to whether the claim “appl[ies], rel[ies] on, or use[s] the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception,” i.e., “integrates a judicial exception
into a practical application.” Here, the additional elements recited in claim 1
beyond the abstract idea are “a network,” “an online platform,” “a
securitization engine,” “a processor,” “a web portal,” “the Internet,” and “a
graphical display” — elements that, as the Examiner observes (Final Act. 5;
Ans. 7–8), is described in the Specification as a generic computing elements.
See Spec. ¶¶ 26–31, Fig. 1. For example, the Specification describes the
network as a communication link or the Internet and the online platform as
including platform server systems and web server systems. See id. ¶¶ 26–
27. The engine is executed by a processor that “may include, without
limitation, digital signal processor (DSP) hardware, or any other hardware
capable of executing software.” Id. ¶¶ 28, 30. The Specification does not
contain the terms “web portal,” or “graphical display” and thus provides no
specific definition for them.6 The Specification does discuss a computing

6 We note that Provisional Application number 61/445,529 also does not
contain the terms “web portal” and “graphical display” in the Specification
or Appendix C.
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system that can comprise personal computers and mobile devices having a
user interface of a display monitor. See id. ¶ 28.
Limitations (a), (c), (e), (f), (h), (i), (m), and (q) of receiving,
providing, submitting, transmitting, and displaying data are activities
ordinarily done in financial funding and are extra-solution activities (see In
re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom Bilski
v. Kappos, 561 U.S. 593), and are activities of outputting of the results of
analyses, a post-solution activity (see id.; Bilski, 561 U.S. at 610–11 (“Flook
stands for the proposition that the prohibition against patenting abstract ideas
‘cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment’ or adding ‘insignificant postsolution
activity.”’) (quoting Diehr, 450 U.S. at 191–92). The limitations of
generating data, limitations (b), (c), (d), (g), (j), (l), (p), and (q), are recited
functionally without technical or technological details on how, i.e., by what
algorithm or on what basis/method, the engine or processor performs these
steps, and as such can comprise some analysis of data, which can be
performed mentally (see Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (“[W]e have treated analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes”). Similarly, limitation (k) of
performing a validation is recited functionally without technical or
technological details on how the validation is performed, and as such
comprises some analysis of data, a mental process. Limitation (n) of
comparing data comprises analyses of data, which can be performed
mentally. Limitation (o) of executing a transaction is similar to gathering
and transmitting information, which are activities ordinarily done in
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financial transactions and are extra-solution activities. See In re Bilski, 545
F.3d at 963 (characterizing data gathering steps as insignificant extra-
solution activity).
We find no indication in the Specification, nor does the Appellant
direct us to any indication, that the operations recited in claim 1 require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, invoke any asserted inventive programming, or
that the claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”). Rather, the
Appellant states that the operations recited in the claim require a “mobile
device or PC.” Appeal Br. 47.
The Appellant contends that claim 1 is “directed to a specific and
uniquely-described technological solution to problems in traditional real-
estate investment trusts and securitization engines.” Id.; see also id. at 51–
56 (citing DDR Holdings). The Appellant similarly argues that the claimed
features “transform a real-estate entity into a share in or unit that holds an
interest in the real property and offers it to investors anywhere online in a
step-by-step process that inherently integrates computer systems to be able
to securitize a real property to large number of people.” Id. at 48. When
viewed through the lens of the 2019 Revised Guidance, the Appellant
contends that under Prong 2, the elements of the claim integrate the abstract
idea into a practical application because the combination of the elements
“reflects an improvement in the functioning of a computer, or an
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improvement to other technology or technical field.” 84 Fed. Reg. at 55
(citing DDR Holdings, 773 F.3d at 1258–59). We disagree.
The Appellant states that the invention addresses the problem of
“traditional public offerings and funding for real-estate investments.”
Appeal Br. 53 (citing Spec. ¶¶ 7–9). However, the Appellant does not
address how this problem specifically arises in the realm of computer
networks. As noted above, the Specification provides that prior art problems
included the lengthy time to raise capital, uncertainty in which assets are
purchased, multiple meeting, lack of time for due diligence, lack of
opportunities, and generally, a slow, costly, and burdensome process for
investing in real estate. See Spec. ¶¶ 3–7. However, as the Appellant
acknowledges (see Appeal Br. 53), these problems regarding real estate
funding existed prior to the Internet, and do not arise from or are specifically
related to computer technology.
Further, the purported solution of an automated “process [that] is
novel, complex and inherently computerized rather than directed to a simple
contractual relationship or conventional steps with wholly generic computer
implementation” (id. at 48) or of “a complete online crowdfunding solution
that offers diversified real estate investment directly to investors online and
allows them to pool their money and invest collectively in high value real
estate properties using state-of-the-art technology in a clear, efficient, and
transparent process” (id. at 53) is not rooted in computer technology. This
purported solution requires the use of a generic system comprising a generic
network, computer system, engine, processor, web portal, and graphical
display. See supra; see also Alice, 573 U.S. at 224–26. The Appellant does
not, and cannot, claim to have invented the use of the system, network,
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engine, processor, portal, or display. The “focus” of the claim is not “on the
specific asserted improvement in computer capabilities” (Enfish, 822 F.3d
at 1336), but rather on using the computer components as tools to implement
the abstract idea in the particular field of electronic illiquid/real estate
investing. Cf. Appeal Br. 48 (the process “inherently integrates computer
systems to be able to securitize a real property to a large number of people”).
That the claim “intrinsically” involves programming and computer
components (id.), limiting the invention to a computer environment does not
make the claim less abstract. See FairWarning IP,., 839 F.3d at 1094–95,
1097 (“[W]hile the patent may in fact require that the claimed data relate to
‘transactions or activities that are executed in the computer environment,’
. . . limiting the claims to the computer field does not alone transform them
into a patent-eligible application.”); Affinity Labs of Tex., LLC v. DIRECTV,
LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“The Supreme Court and [the
Federal Circuit] have repeatedly made clear that merely limiting the field of
use of the abstract idea to a particular existing technological environment
does not render the claims any less abstract.”). Any improvement to
“fractionalizing a real estate property,” “asset manage[ment],” and
“securitizing assets” (Appeal Br. 48, 53) lies in the process itself, an
improvement in the abstract idea itself, not to any technological
improvement. See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281,
1287–88 (Fed. Cir. 2018); Trading Tech. Int’l, Inc. v. IBG LLC, 921 F.3d
1378, 1385 (Fed. Cir. 2019). To the extent the Appellant argues that the
solution is rooted in technology because the process is complex (see Appeal
Br. 48), a complex abstract idea is still an abstract idea. The claim merely
uses the computer to perform the abstract idea and does no more than
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generally link the judicial exception to the particular technological
environment of online investing. Cf. id at 54–56 (discussing investor’s
benefits in funding and availability of the process being online).
To the extent the Appellant argues that the claim is not directed to an
abstract idea because it is novel (id. at 47) and “innovative” (id. at 53; see
also id. at 54–55), the Federal Circuit has held that “the addition of merely
novel or non-routine components” does not “necessarily turn[] an abstraction
into something concrete. In any event any novelty in implementation of the
idea is a factor to be considered only in the second step of the Alice
analysis.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014).
To the extent the Appellant argues that the claimed features transform
a real estate entity into a different state (Appeal Br. 48, (“they transform a
real-estate entity into a share in or unit that holds an interest in the real
property”)), this is at best a financial transformation of a property into a
financial asset and not a transformation of an abstract idea into a patent
eligible invention. More broadly, this is merely takes in real estate data and
outputs financial data; the data are still data. See Clarilogic, Inc. v.
FormFree Holdings Corp., 681 F. App’x 950, 954 (Fed. Cir. 2017) (taking
in financial data and outputting a report does not transform the data into
something else).
Accordingly, we conclude claim 1 does not contain an element that
imposes a meaningful limit on the abstract idea that integrates the abstract
idea into a practical application.
Thus, we are not persuaded of error in the Examiner’s determination
that claim 1 is directed to an abstract idea.
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Step Two of the Mayo/Alice Framework
Under the second step in the Alice framework (corresponding to Step
2B of the 2019 Revised Guidance), we find supported the Examiner’s
determination that the limitations of claim 1, taken individually and as an
ordered combination, do not amount to significantly more than the judicial
exception and that “the generically recited network, processor and server”
perform “generic computer functions [that] are well-understood, routine and
conventional activities previously known to the industry similar to those
referenced by the July 2015 Update of the Interim Guidance of Patent
Subject Matter Eligibility.” Final Act. 5–6.
The Appellant recites the limitations of the claim and contends that
“claim 1 recites more than simply ‘securitization of assets’ using a
generically recited processor and computer, and these features cannot be
fairly characterized as ‘generic computer functions that are well-understood,
routine, and conventional activities.’” Appeal Br. 51 (citing Final Act. 2–3).
The Appellant further argues that the Examiner fails to provide evidence
otherwise. See id. at 56; Reply Br. 2–5 (citing Berkheimer v. HP Inc., 881
F.3d 1360 (Fed. Cir. 2018)). However, the Examiner cites to the USPTO’s
July 2015 Update on Patent Subject Matter Eligibility, 80 Fed. Reg. 45,429
(July 30, 2015) as support for the finding that the claimed generic system
performs functions that are well-understood, routine, and conventional.
Final Act. 6. In doing so, the Examiner follows “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP Inc.),” USPTO Memorandum,
Robert W. Bahr, Deputy Commissioner for Patent Examination Policy,
April 19, 2018 (the “Berkheimer Memo”)).
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The court in Berkheimer held that “[t]he patent eligibility inquiry may
contain underlying issues of fact.” Berkheimer, 881 F.3d at 1365 (quoting
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016) (“The § 101 inquiry ‘may contain underlying factual
issues.”’)). But, the court also held that “[w]hen there is no genuine issue of
material fact regarding whether the claim element or claimed combination is
well-understood, routine, [and] conventional to a skilled artisan in the
relevant field, this issue can be decided on summary judgment as a matter of
law.” Berkheimer, 881 F.3d at 1368 (emphasis added). This qualification
has been subsequently reiterated.
If there is a genuine dispute of material fact, Rule 56 requires that
summary judgment be denied. In Berkheimer, there was such a
genuine dispute for claims 4–7, but not for claims 1–3 and 9. . . .
[I]n accordance with Alice, we have repeatedly recognized the
absence of a genuine dispute as to eligibility for the many claims
that have been defended as involving an inventive concept based
merely on the idea of using existing computers or the Internet to
carry out conventional processes, with no alteration of computer
functionality.
Berkheimer v. HP Inc., 890 F.3d 1369, 1371–73 (Fed. Cir. 2018) (Order, On
Petition for rehearing en banc, May 31, 2018) (Moore, J., concurring); see
also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354,
1368 (Fed. Cir. 2018) (“A factual allegation or dispute should not
automatically take the determination out of the court’s hands; rather, there
needs to be justification for why additional evidence must be considered—
the default being a legal determination.”). Here, the Specification
indisputably shows the claimed computing elements were conventional at
the time of filing. See supra; Spec. ¶¶ 26–31. And the Appellant’s
statements that the functions are not well-understood, routine, and
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conventional (see Appeal Br. 51) is an unsupported allegation. Accordingly,
based on the Appellant’s description, we find these components to be well-
understood, routine, or conventional.
We note that the claim simply recites the functional results to be
achieved by the components. The claim “provides only a result-oriented
solution[] with insufficient detail for how a computer accomplishes it. Our
law demands more.” Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1342 (Fed. Cir. 2017) (“Capital One”). Taking the claimed
elements separately, the functions performed by the platform, engines,
processor, and network are purely conventional. The claimed generic
components operate in their ordinary and conventional capacities to perform
the well-understood, routine, and conventional functions of receiving and
transmitting data (i.e., limitations (a), (c), (e), (f), (h), (i), and (m) of
receiving, providing, submitting, and transmitting data, limitation (o) of
executing a transaction ), analyzing data (i.e., limitations (b), (c), (d), (g), (j),
(l), (p), and (q) of generating data, limitation (k) of validating data, and
limitation (n) of comparing data), and performing an action based on the
analysis (i.e., limitations (p) and (q) of sending notifications and displaying
results). See Spec. ¶¶ 26–31 (describing generic computer components);
Elec. Power, 830 F.3d at 1354–55 (gathering, sending, monitoring,
analyzing, selecting, and presenting information does not transform the
abstract process into a patent-eligible invention); Alice, 573 U.S. at 226
(“Nearly every computer will include a ‘communications controller’ and
‘data storage unit’ capable of performing the basic calculation, storage, and
transmission functions required by the method claims.”); Chorna, 656 F.
App’x at 1021 (“Taking the claim elements separately, the claims invoke the
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use of an ‘organized securities exchange, commodities exchange, alternative
trading system, and ‘over the counter’ system’” which were well-
understood, routine, conventional activities previously known in the
industry).
Considered as an ordered combination, the components of Appellant’s
claim 1 add nothing that is not already present when the steps are considered
separately. The sequence of receiving and transmitting data, analyzing data,
and performing an action based on the analysis is equally generic and
conventional or otherwise held to be abstract. See Elec. Power, 830 F.3d
at 1354–56 (holding that the sequence of gathering, analyzing, and
displaying in real-time was abstract); FairWarning, 839 F.3d at 1095
(holding that sequence of generating a rule related to accessing information,
applying the rule, and storing and announcing the results was abstract;
Chorna, 656 F. App’x at 1021 (“Viewing the claims as an ordered
combination, the claimed financial securities, allocation formulas, trading
networks, and clearing houses do not add anything to the steps described
above.”). The ordered combination of the steps is, therefore, ordinary and
conventional.
The Appellant also argues that the invention is not directed to an
abstract idea and effects an improvement to technology because it is novel,
innovative, beneficial, and performs steps that have not been done before “as
evidenced by their absence in the prior art,” and as supported by evidence of
Declarations. Appeal Br. 53 (emphases omitted); see also id. at 47, 54–56.
To the extent the Appellant argues that the claim is significantly more than
the abstract idea because there are no prior art rejections, an abstract idea
does not transform into an inventive concept just because the prior art does
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not disclose or suggest it. See Mayo, 566 U.S. at 78. Further,
“[g]roundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). 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.” Diehr, 450 U.S. at 188–
89; see also Mayo, 566 U.S. at 91 (rejecting “the Government’s invitation to
substitute §§ 102, 103, and 112 inquiries for the better established inquiry
under § 101”).
Thus, we are not persuaded of error in the Examiner’s determination
that the limitations of claim 1 do not transform the claim into significantly
more than the abstract idea.
We therefore sustain the Examiner’s rejection under 35 U.S.C. § 101
of claim 1 and of claims 2–25 and 27, the rejection of which stands with
claim 1.

Written Description
The Examiner rejects the independent claims for the Specification, as
originally filed (“Specification”) not describing in such a way as to
reasonably convey to one skilled in the relevant art that the inventor, at the
time the application was filed, had possession of the claimed invention
having the limitations recited in claim 1 of (a)(iii) “receiving a proposed
development budget for improving the real property”; (i) transmitting an
offer including a development budget; (j) requesting a hyperlink containing
a secure key; (k) “a server side form validation and client side form
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validation before validating a registered investor profile”; (l) “the generation
of an account activation timestamp”; (n) comparing a timestamp;
(o) “executing, in order of first-in-first-out relative to other participating
investors’ electronic payments and timestamps associated with said
electronic payments”; (p) “generating and transmitting completion
notification”; and (q) “displaying an amount of investment made in the real
property to-date relative to a total amount of investment made available by
the offer, ” and similarly recited in claims 11 and 21. Final Act. 6–10; see
also id. at 11–16.
The Appellant contends that support for the limitations at issue of the
independent claims can be found in the specification and Appendices of
provisional application number 61/445,529 (“Provisional Application”)
(Appeal Br. 6, 9, 13–15, 17), “which was properly incorporated herein by
reference at the time of filing this application” (id. at 57). The Appellant
further contends that the Examiner, on the basis of it containing new matter
improperly, refused to enter an amendment to the Specification filed
February 13, 2017. Id. at 58. Specifically, the Appellant argues that “the
amendments to the specification rely only on matter previously incorporated
by reference from the ’529 provisional.” Id. We address both of these
issues in turn.7

7 Where the new matter is confined to amendments to the
specification, review of the examiner’s requirement for
cancelation is by way of petition. But where the alleged new
matter is introduced into or affects the claims, thus necessitating
their rejection on this ground, the question becomes an
appealable one, and should not be considered on petition even
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Provisional Application number 61/445,529, was filed on February
22, 2011. The pending application was filed February 22, 2012. The
Specification states “[t]his application claims the benefit of priority of U.S.
Provisional Patent Application No. 61/445,529, filed February 22, 2011,
which is incorporated by reference herein in its entirety for any purpose.”
Spec. ¶ 1. The claims as originally filed did not recite the limitations at
issue.
We first address whether the substance of the limitations at issue were
included in the Specification via incorporation of the Provisional
Application. The Director of the USPTO has the authority to issue a patent
upon an application wherein the disclosure incorporates, by reference, and
relies on, certain portions of a disclosure of an existing document, provided
that such document is easily available to the public and to the USPTO.
General Elec. Co. v. Brenner, 407 F.2d 1258, 1262 (D.C. Cir. 1968). In
exercising that authority, the Director has promulgated 37 C.F.R. § 1.57.
37 C.F.R. § 1.57 (2015) provides, in relevant part:
(b) Subject to the conditions and requirements of this paragraph,
if all or a portion of the specification or drawing(s) is
inadvertently omitted from an application, but the application
contains a claim under § 1.55 for priority of a prior-filed foreign

though that new matter has been introduced into the specification
also.
MPEP § 608.04(c); see also id. § 2163.06 (“If both the claims and
specification contain new matter either directly or indirectly, and there has
been both a rejection and objection by the examiner, the issue becomes
appealable and should not be decided by petition.”).

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application or a claim under § 1.78 for the benefit of a prior-filed
provisional, nonprovisional, international application, or
international design application, that was present on the filing
date of the application, and the inadvertently omitted portion of
the specification or drawing(s) is completely contained in the
prior-filed application, the claim under § 1.55 or 1.78 shall also
be considered an incorporation by reference of the prior-filed
application as to the inadvertently omitted portion of the
specification or drawing(s).
(1) The application must be amended to include the
inadvertently omitted portion of the specification or drawing(s)
within any time period set by the Office, but in no case later than
the close of prosecution as defined by § 1.114(b), or
abandonment of the application, whichever occurs earlier. The
applicant is also required to:
. . .
(iii) Identify where the inadvertently omitted
portion of the specification or drawings can be found in
the prior-filed application.
. . .
(d) “Essential material” may be incorporated by reference, but
only by way of an incorporation by reference to a U.S. patent or
U.S. patent application publication, which patent or patent
application publication does not itself incorporate such essential
material by reference. “Essential material” is material that is
necessary to:
(1) Provide a written description of the claimed invention,
and of the manner and process of making and using it, in such
full, clear, concise, and exact terms as to enable any person
skilled in the art to which it pertains, or with which it is most
nearly connected, to make and use the same, and set forth the
best mode contemplated by the inventor of carrying out the
invention as required by 35 U.S.C. 112(a);
. . .
(g) Any insertion of material incorporated by reference into the
specification or drawings of an application must be by way of an
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amendment to the specification or drawings. Such an
amendment must be accompanied by a statement that the
material being inserted is the material previously incorporated by
reference and that the amendment contains no new matter.
(h) An incorporation of material by reference that does not
comply with paragraphs (c), (d), or (e) of this section is not
effective to incorporate such material unless corrected within any
time period set by the Office, but in no case later than the close
of prosecution as defined by § 1.114(b), or abandonment of the
application, whichever occurs earlier.
Additionally, 37 C.F.R. § 1.114 (2015) provides:
(b) Prosecution in an application is closed as used in this section
means that the application is under appeal, or that the last Office
action is a final action (§ 1.113), a notice of allowance (§ 1.311),
or an action that otherwise closes prosecution in the application.
(c) A submission as used in this section includes, but is not
limited to, an information disclosure statement, an amendment to
the written description, claims, or drawings, new arguments, or
new evidence in support of patentability. If reply to an Office
action under 35 U.S.C. 132 is outstanding, the submission must
meet the reply requirements of § 1.111.
In order to satisfy the written description requirement of 35 U.S.C.
§ 112, first paragraph, the Specification of the present application must
describe the invention so as to convey to those of ordinary skill in the art that
the Appellant was in possession of the claimed invention, that is, all
elements of each of the claims, combined as called for in the claims, at the
time the present application was filed. Thus, description of each of the claim
limitations at issue, in combination with the other limitations called for in
the claims, is necessary to provide a written description of the claimed
invention, as required by the first paragraph of 35 U.S.C. § 112.
Accordingly, description of each of these claim limitations is “essential
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material,” and cannot be incorporated by reference to a provisional
application. 37 C.F.R. § 1.57(d)(1). Therefore, the Appellant’s
incorporation of this material by reference to the Provisional Application is
ineffective to incorporate such material unless corrected within any time set
by the USPTO, but in no case later than the close of prosecution of the
application as defined by 37 C.F.R. § 1.114(b), or abandonment of the
application, whichever occurs earlier. 37 C.F.R. § 1.57(h).
The second issue is whether the Appellant corrected the incorporation
by the proposed Amendment to the Specification, filed February 13, 2017
(“Amendment”). Throughout the prosecution history, the Examiner has
rejected the claims under 35 U.S.C. § 112, first paragraph, and has cited to
37 C.F.R. § 1.57 as support for the inadequacy of the Appellant’s statement
of incorporation by reference to the provisional application. The Appellant’s
attempt to correct the deficiency of the incorporation by reference was after
a final action was issued, i.e., after close of prosecution, but then after
another action upon continued examination, i.e., after re-opening of
prosecution, making the attempt timely. The attempt must also include “a
statement that the material being inserted is the material previously
incorporated by reference and that the amendment contains no new matter.”
37 C.F.R. § 1.57(g). The Appellant makes such a statement at page 22 of
the Remarks accompanying the Amendment:
This application properly claims the benefit of priority to the
Provisional Application, which was properly incorporated herein
by reference at the time of filing this application. Accordingly,
no new matter is added to this application by these amendments
because the subject matter was included in the Provisional
Application, and therefore this Application, at the time of filing.
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Therefore, the attempt to correct the incorporation was timely and included
the necessary statement.
The next issue is whether the Amendment contained new matter in
adding material not contained in the Provisional Application. With the
Remarks accompanying the Amendment, the Appellant does not provide
specific citations to the portions of the Provisional Application to where
support can be found. The Appeal Brief, at page 58, cites to the Provisional
Application at pages 26–27 of Appendix C as support for amended
paragraph 25, Figure 3 as support for amended paragraph 38, pages 2–3 of
Appendix A as support for amended paragraph 39, pages 8–9 of Appendix C
as support for amendment paragraph 46, and pages 26–27 of Appendix C as
support for amended paragraph 47. Notably, there is no reference to the
Provisional Application’s Specification.
Amended paragraph 25 attempts to add sentences that in one
embodiment, a new user may register online to become eligible to invest, the
registration possibly involving particular information and an agreement to
terms and conditions. Amendment 2. Once the user provides the
information and agrees to the terms and conditions, “the server-client form
validation has been performed to validate the information entered. After the
validation, a user will be sent an email with a link containing a key to verify
their email address. Upon clicking on the link, the user’s email is verified
and the user account is activated.” Id. (underlining omitted). Once
activated, the user may login, and “a timestamp is recorded to determine an
investor's eligibility to invest in a particular security upon the account
activation.” Id. at 2–3 (underlining omitted). In another embodiment, “new
users may be allowed to purchase recent offerings,” but only “once their
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account is funded. Additionally, a secure online profile may be used where
user data such as payment information, investor SSN, and password are
encrypted for the users’ protection.” Id. at 3 (underlining omitted).
Appendix C describes a “defin[ition of] the process by which a new user
registers with Zonopoly in order to become eligible to invest in securities
offered through the website.” App. C 26. Listed are dependencies, parts of
an initial sign-up, and an example webpage. Id. Part of the “Functionality”
of the “Initial Sign-up” are “k. Server-side Form Validation[;] l. Client-side
Form Validation.” Id. The user’s email address is verified by a process
whereby “Zonopoly will send out an email with a generated key. The user
will need to click on a link and login to Zonopoly to verify their ownership
of the email address.” Id. at 27. After the initial sign-up, the user is set to a
provisional status and is shown steps required to become a full investor, the
steps comprising setting up additional security questions and completing an
investor questionnaire. Id. The questionnaire includes various questions
regarding statuses, income/worth, characteristics, and “k. Server-side form
validation[;] l. Client-side form validation.” Id. At best, Appendix C has
support for registering a user involving particular information including an
encrypted SSN and an agreement, sending a key, clicking on a link to verify
an email address, and some functionality of server-side form validation and
client-side validation, without any further details on what is being validated.
There is not sufficient support for activating an account after email
verification, performing server-client form validation to validate the
information, recording a timestamp to determining eligibility to invest,
requiring account funding before allowing purchases, using a secure online
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profile, and encrypting payment information and password. Thus, this
paragraph contains new matter not in the Provisional Application.
Amended paragraph 38 attempts to insert the sentence “[i]n one
embodiment, the securitization engine may display an amount of investment
made in the real property to-date relative to total amount of investment made
available by the offer.” Amendment 3–4 (underlining omitted). Figure 3 of
the Provisional Application depicts a chart with various functionalities of the
invention. Figure 3 provides for “AUTOFILL STANDARD WEB PRESENTATION
TEMPLATE” with data and for “KEY DATA” of “DATA INPUT/INCOME
STATEMENT.” We do not see, and the Appellant does not direct our attention
to, anything that provides for a no description of a display of an amount of
investment made relative to total amount of investment made. Thus, this
paragraph contains new matter not in the Provisional Application.
Amended paragraph 39 attempts to insert the sentence “[b]ased on the
received expression of interest, the securitization engine may further
estimate an amount of money that may be raised from the investors or
potential investors and a price of purchasing the partial share in or unit of the
entity that holds an interest in the real property.” Amendment 4 (underlining
omitted). Appendix A provides an “Exemplary Storyboard.” App. A, Title.
Page 2 shows a graphic of a “Your Portfolio” page with areas depicting a
map, a project summary, and amounts for ownership, value, income, and
yield in the total portfolio. There are also notes that “[e]ach project
summary should come up when clicked on or rolled over” and “[w]e need to
create mechanisms to encourage projects get fully funded.” Id. Page 3
depicts a graphic of a “Project Summary” page with areas depicting a picture
of a building, a description that may contain a link, section of investment
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offering with values per unit, raised, and closing fate, and an area with
community feedback score, comments, and questions and answers. There is
also a note that “[w]e should make it easy for text in the site to link to
Wikipedia and other sites.” Id. We do not see where or how pages 2 and 3
of Appendix A show an engine, based on received information, estimating
an amount of money that may be raised and estimating a price. At best, the
pages show the amount of money desired to be or that is actually raised and
an actual price per unit. Thus, this paragraph contains new matter not in the
Provisional Application.
Amended paragraph 46 attempts to insert the following:
In an exemplary embodiment, when an investor purchases
shares, a timestamp of the purchase order has been recorded.
Orders of investors are processed in a first-in-out manner that is
determined by the timestamp of the record in the database. Once
the asset is fully funded and all transactions have been
successfully completed, an email notification about the market
cap and closing date is sent out to investors.
Amendment 5 (underlining omitted). Page 8 of Appendix C describe “the
business processes related to post-closing investor management” and “the
purchase order business process.” Under the “Functionality” section of the
“3. Post Closing Investor Management (Automated)” section, page 8
provides for “K-1 generation and emailing” and “Updates on market
capitalization and NOI.” Under the “Functionality” section of the “4.
Purchase Order Processing (Automated)” section, page 8 provides
“Orders will be processed in a first-in-first-out manner that is determined by
the timestamp of the record in our database.” However, it does not
specifically state who placed the purchase order, and, more importantly,
does not describe that the timestamp is recorded when an investor purchases
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shares. Further, there is no discussion of an email notification after the
specified criteria about the market cap and closing date. Thus, this
paragraph contains new matter not in the Provisional Application.
Amended paragraph 47 attempts to qualify the received “information
relating to the illiquid asset” by adding the statement “such as property
summary, balance sheet, development budget, return analysis (not including
for their fractional share), sources and uses, and loan summary.”
Amendment 5 (underlining omitted). As discussed above with reference to
amended paragraph 25, Appendix C describes a “defin[ition of] the process
by which a new user registers with Zonopoly in order to become eligible to
invest in securities offered through the website” with functionalities of “1.
Initial Sign-Up”; “2. Verify Email Address”; “After completing the initial
sign-up, the new user is set to a provisional status”; and “Upon first login the
user will be presented the investor questionnaire.” App. C 26–27. We do
not see where or how pages 26 and 27 of Appendix C show receiving from
an investor “information relating to the illiquid asset such as property
summary, balance sheet, development budget, return analysis (not including
for their fractional share), sources and uses, and loan summary.”
Amendment 5 (underlining omitted). Thus, this paragraph contains new
matter not in the Provisional Application.
Having determined that the Appellant’s attempt to amend the
Specification contains new matter, we conclude that the Appellant’s
amendment to the Specification does comply with 37 C.F.R. § 1.57 to
correct the deficiency in the incorporation by reference of the Provisional
Application because the subject matter is not “inadvertently omitted
portion[s] of the specification or drawing(s) [that] is completely contained in
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the prior-filed application.” 37 C.F.R. § 1.57(b); see also id. §§ 1.57(l),
1.57(g). And, we conclude that the Examiner’s decision to refuse to enter
the Amendment is proper.
Finally, we address the issue of whether the Specification describes in
such a way as to reasonably convey to one skilled in the relevant art that the
inventor, at the time the application was filed, had possession of the claimed
invention having the limitations at issue. The Appellant acknowledges that
the Specificationdoes not provide specific support for the limitations at issue
(see Appeal Br. 6, 12–17 (providing no citations to the Specification)), and
contends that support for these limitations can be found in the drawings and
Appendices of the Provisional Application (id.). However, because we
determine that the Provisional Application is not properly incorporated into
the Specification, we conclude that there is insufficient support in the
Specification for reasonably convey to one skilled in the relevant art that the
inventor, at the time of filing, had possession of these limitations. We note
that the Specification does not contain the terms “budget,” “hyperlink,”
“timestamp,” “first-in-first-out,” “completion,” or “notification.” Although
the Specification discusses a display monitor and displaying data (Spec.
¶ 28), there is no discussion of displaying a graphical display of amounts.
Based on the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 112, first paragraph, of independent claims 1, 11, and 21.
The Examiner also rejects dependent claims 7 and 17 for the
Specification not describing in such a way as to reasonably convey to one
skilled in the relevant art that the inventor had possession of the claimed
invention having the limitation of “a proposed development budget for
management of the real property.” Final Act. 10, 13. The Appellant does
Appeal 2018-008242
Application 13/402,118

36
not provide separate argument or direct attention to where the Specification
provides support for the limitations at issues. See Appeal Br. 57–59. Thus,
we summarily affirm the rejection under 35 U.S.C. § 112, first paragraph, of
these dependent claims.
CONCLUSION
The Examiner’s decision to reject claims 1–25 and 27 is sustained.

In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–25, 27 101 Eligibility 1–25, 27
1–25, 27 112, first
paragraph
Written
Description
1–25, 27
Overall Outcome 1–25, 27
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)(l)(iv).

AFFIRMED