Value Connect Inc.Download PDFPatent Trials and Appeals BoardMay 11, 202015370374 - (D) (P.T.A.B. May. 11, 2020) Copy Citation 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. 15/370,374 12/06/2016 Christopher John Bisson 81000002 (DWW0101/US) 4493 33072 7590 05/11/2020 KAGAN BINDER, PLLC SUITE 200, MAPLE ISLAND BUILDING 221 MAIN STREET NORTH STILLWATER, MN 55082 EXAMINER WHITE, LANCE WILLIAM ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 05/11/2020 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): docketing@kaganbinder.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte CHRISTOPHER JOHN BISSON, MARK TIMOTHY GEORGE, DEVIN GAUTHIER, and MARK NORMAN RICHARD MONTEIRO _____________ Appeal 2019-004728 Application 15/370,374 Technology Center 3600 ____________ Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and JAMES W. DEJMEK, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of claims 1–20. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a) (2017). According to Appellant, the real party in interest is Value Connect Inc. See Appeal Br. 3. Appeal 2019-004728 Application 15/370,374 2 STATEMENT OF THE CASE 2 Introduction Appellant’s claimed invention relates generally to “generating property appraisal reports.” (Spec. ¶ 4). References The prior art relied upon by the Examiner as evidence is: Name Reference Date Shaughnessy et al. US 2003/0212960 A1 Nov. 13, 2003 Stinson US 8,046,306 B2 Oct. 25, 2011 TOTAL for Mobile Non-Patent Literature June 27, 2016 Rejections A, B, and C Rej Claims Rejected 35 U.S.C. § Reference(s)/Basis A 1–20 101 Eligibility (Judicial Exception) B 1–8, 14, and 16–20 103 Stinson, Shaughnessy et al. (“Shaughnessy”) C 9–13 and 15 103 Stinson, Shaughnessy, TOTAL for Mobile (“TOTAL”) 2 We herein refer to the Final Office Action, mailed Sept. 6, 2017 (“Final Act.”); Appeal Brief, filed Apr. 2, 2018 (“Appeal Br.”); and the Examiner’s Answer, mailed Aug. 28, 2018 (“Ans.”). Appeal 2019-004728 Application 15/370,374 3 ANALYSIS We reproduce infra independent claim 1 in Table One. We have considered all of Appellant’s arguments and any evidence presented. We highlight and address specific findings and arguments for emphasis in our analysis below.3 Rejection A of Claims 1–20 under § 101 USPTO § 101 Guidance On January 7, 2019, the U.S. Patent and Trademark Office (USPTO) published revised guidance on the application of 35 U.S.C. § 101. See USPTO 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (“2019 Memorandum”).4 Under that guidance, we first look to whether the claim recites: (1) (see 2019 Memorandum Step 2A – Prong One) 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 3 Throughout this opinion, we give the claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). 4 The Office issued a further memorandum on October 17, 2019 (the “October 2019 Memorandum”) clarifying guidance of the January 2019 Memorandum in response to received public comments. See https:// www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf. Moreover, “[a]ll USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” January 2019 Memorandum at 51; see also October 2019 Memorandum at 1. Appeal 2019-004728 Application 15/370,374 4 (2) (see 2019 Memorandum Step 2A – Prong Two) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).5 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 Memorandum Step 2B. Because there is no single definition of an “abstract idea” under Alice step 1, the 2019 Memorandum synthesizes, for purposes of clarity, predictability, and consistency, key concepts identified by the courts as abstract ideas to explain that the “abstract idea” exception includes the following three groupings: 1. Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations; 2. Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion); 5 This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application. See 2019 Memorandum - Section III(A)(2). Appeal 2019-004728 Application 15/370,374 5 and 3. Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). See 2019 Memorandum, 84 Fed. Reg. at 52. According to the 2019 Memorandum, “[c]laims that do not recite [subject] matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas,” except in rare circumstances. Even if the claims recite any one of these three groupings of abstract ideas, these claims are still not “directed to” a judicial exception (abstract idea), and thus are patent eligible, if “the claim as a whole integrates the recited judicial exception into a practical application of that exception.” 2019 Memorandum, 84 Fed. Reg. at 53. For example, limitations that are indicative of integration into a practical application include: 1. Improvements to the functioning of a computer, or to any other technology or technical field — see MPEP § 2106.05(a); 2. Applying the judicial exception with, or by use of, a particular machine — see MPEP § 2106.05(b); 3. Effecting a transformation or reduction of a particular article to a different state or thing — see MPEP § 2106.05(c); and 4. Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological Appeal 2019-004728 Application 15/370,374 6 environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception — see MPEP § 2106.05(e). In contrast, limitations that are not indicative of integration into a practical application include: 1. Adding the words “apply it” (or an equivalent) with the judicial exception, or merely include instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea — see MPEP § 2106.05(f); 2. Adding insignificant extra-solution activity to the judicial exception — see MPEP § 2106.05(g); and 3. Generally linking the use of the judicial exception to a particular technological environment or field of use — see MPEP § 2106.05(h). See 2019 Memorandum, 84 Fed. Reg. at 54–55 (“Prong Two”). 2019 Memorandum, Step 2A, Prong One The Judicial Exception Under the 2019 Memorandum, we begin our analysis by first considering whether the claims recite any judicial exceptions, including certain groupings of abstract ideas, in particular: (a) mathematical concepts, (b) mental steps, and (c) certain methods of organizing human activities. The Examiner concludes the claims recite an abstract idea: [T]he claimed invention comprises an abstract idea that is considered to be an idea of itself in that it can be a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper.” A person could choose an appraisal report specification and manually receive information related to the subject property and generate a report in accordance with a specification without the aid of technology. Final Act. 7 (emphases added). Appeal 2019-004728 Application 15/370,374 7 We apply the Director’s 2019 Memorandum de novo. In Table One below, we identify in italics the specific claim limitations that we conclude recite an abstract idea. We also identify in bold the additional (non-abstract) claim elements that we find are generic computer components: TABLE ONE Independent Claim 1 2019 Memorandum [a] A system for generating electronic property appraisal reports, each property appraisal report providing an appraisal by an appraiser of a subject property, the subject property being a real property, the system comprising: 6 Abstract Idea: Generating electronic property appraisal reports is a method of organizing human activity— i.e., a fundamental economic practice that includes commercial or legal interactions in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, including business relations. See 2019 Memorandum, 84 Fed. Reg. at 52. [b] a portable computing device comprising: a computer processor, the computer processor being programmable by software; a display screen; an electronic network interface for receiving information Additional generic computer components designated in bold. 6 A system falls under the statutory subject matter class of a machine. See 35 U.S.C. § 101 (“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”). Appeal 2019-004728 Application 15/370,374 8 Independent Claim 1 2019 Memorandum over an electronic network; and a camera configured to capture digital photographs and videos; and software that when executed by the computer processor causes the computer processor to: [c] retrieve an appraisal report specification specifying: Retrieving an appraisal report specification is insignificant extra- solution activity (i.e., data gathering). See 2019 Memorandum, 55 n.31; see also MPEP § 2106.05(g). [d] the format of the property appraisal report; Retrieving the appraisal report specification [c] that further specifies the format of the property appraisal report [d] is insignificant extra- solution activity (i.e., data gathering). See 2019 Memorandum, 55 n.31; see also MPEP § 2106.05(g). [e] a plurality of items to be included in the property appraisal report including information identifying the subject property, an estimated value of the subject property, a video of a portion of the subject property, and information about one or Retrieving a plurality of items to be included in the property appraisal report is insignificant extra-solution activity (i.e., data gathering). See 2019 Memorandum, 55 n.31; see also MPEP § 2106.05(g). Appeal 2019-004728 Application 15/370,374 9 Independent Claim 1 2019 Memorandum more other properties designated by the appraiser to be comparable to the subject property; and [f] for each specified item, a location in the property appraisal report at which the specified item is to be placed; Performing receive steps (g-j below) for each specified item is insignificant extra-solution activity (i.e., data gathering). See 2019 Memorandum, 55 n.31; see also MPEP § 2106.05(g). [g] receive the information identifying the subject property; Receiving the information identifying the subject property is insignificant extra-solution activity (i.e., data gathering). See 2019 Memorandum, 55 n.31; see also MPEP § 2106.05(g). [h] receive from the appraiser the estimated value of the subject property; Receiving the estimated value of the subject property is insignificant extra-solution activity (i.e., data gathering). See 2019 Memorandum, 55 n.31; see also MPEP § 2106.05(g). [i] receive from the camera the video of a portion of the subject property; Receiving the video of a portion of the subject property is insignificant extra-solution activity (i.e., data gathering). See 2019 Memorandum, 55 n.31; see also MPEP § 2106.05(g). [j] receive via the network the information about other Receiving the information about other properties is insignificant Appeal 2019-004728 Application 15/370,374 10 Independent Claim 1 2019 Memorandum properties designated by the appraiser to be comparable to the subject property; extra-solution activity (i.e., data gathering). See 2019 Memorandum, 55 n.31; see also MPEP § 2106.05(g). [k] generate the property appraisal report for the subject property according to the appraisal report specification including each specified item in the specified location in the property appraisal report. Abstract Idea: Generating the property appraisal report for the subject property according to the appraisal report specification including each specified item in the specified location in the property appraisal report can be performed alternatively by a person as a mental process. See 2019 Memorandum 52. Abstract Idea Appellant contends: Claim 1 claims a system for generating property appraisal reports that comprises a device that is a portable computing device, such as a smartphone, with a camera, where the device runs software (an application) that is part of the claimed device that obtains digital video of a real property using the device’s camera, and automatically inserts the video (being a “specified item”) into a particular specified location in the property appraisal report. Such a report can be distributed to others to be read and each reader will see the video (e.g. a link thereto) in the same place in the report. A human mind cannot so this, nor can this be done with pen and paper. Furthermore, the device is not simply processing information that in available from other sources. A person cannot capture video in her or her mind and insert it into an electronic report - a digital camera and computer processor, which are part of the recited portable computing device are Appeal 2019-004728 Application 15/370,374 11 essential to this process. Video capture requires a camera and the claimed system requires manipulation of the video captured by the camera by computer processor to insert it into a report. A human cannot insert digital video in an electronic report using pen and paper. This requires an electronic device with a “camera 103 [that] is capable of taking digital photographs and video clips under the control of the appraiser 100 using the portable computing device 107” (see paragraph [0025] of the specification). Appeal Br. 13 (emphases added). The Examiner disagrees with Appellant, and further explains the basis for the rejection: The Examiner notes that the specification references receiving information over an electronic network from a portable computing device comprising a camera, such as a smartphone (0004; see also 0025), receiving video obtaining required information to generate the property appraisal report (0006; see also 0005, 0010-0011, 0013, 0027, 0037-0038, 0049). Transmitting and receiving information, wherein the information may be property data, a photograph, or a video, is referenced in a generic sense. There is no disclosure of any technical details on how the video or photograph is inserted, but merely applies transmitting and receiving information, wherein the information may be property data, a photograph, or a video, to technology. The Examiner asserts that the claimed invention comprises an abstract idea that “can be performed in the human mind, or by a human using a pen and paper.” A person could choose an appraisal report specification, manually receive information related to the subject property, and generate a report in accordance with a specification without the aid of technology. For example, an appraiser could choose the specific type of report to generate based on the legal regulatory guidelines, as well as the guidelines of the client ordering the appraisal report, such as a lender. If the appraisal report specification called for the appraisal report to include photographs, the appraiser could add physical photographs to the report. If the appraisal report Appeal 2019-004728 Application 15/370,374 12 specification called for the appraisal report to include videos, the appraiser could add a physical digital video disc comprising videos to the report. The appraiser could add a physical version of desired data to a physical appraisal report. Ans. 5 (emphases added). Even if we agree with Appellant that “[a] person cannot capture video in her or her mind and insert it into an electronic report” because “a digital camera and computer processor, which are part of the recited portable computing device are essential to this process” (Appeal Br. 14), we note that the “generating” function of claim 1 does not recite any particular details regarding how “a video of the subject property” is included in “each specified item in the specified location in the property appraisal report.” As pointed out by the Examiner (Ans. 5) alternatively, “the appraiser could add a physical digital video disc comprising videos to the report. Moreover, the argued literal function of inserting a video is not positively recited in claim 1. See Appeal Br. 13–14. We conclude the preamble of claim 1 and the claim considered as a whole generate an electronic property appraisal report, and as such, both independent claims 1 and 20 recite a method of organizing human activity under the 2019 Memorandum: i.e., a fundamental economic practice (property appraisal) that includes commercial or legal interactions in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, including business relations. See 2019 Memorandum, 84 Fed. Reg. at 52. To the extent that we have determined the “focus” of the claims (and the recited abstract idea) is found in the preamble of claim 1, our reviewing court provides applicable guidance: Appeal 2019-004728 Application 15/370,374 13 [W]e see no error here in the district court citing to the preamble in its review of whether the claims are directed to an abstract idea. See, e.g., BASCOM, 827 F.3d at 1348 (citing preamble for distillation of abstract idea). The district court’s inquiry centered on determining the “focus” of the claims, and was thus in accord with our precedent. E.g., Elec. Power Grp., 830 F.3d at 1353. Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017) (emphasis added). Moreover, the preamble language of claim 1 is fully supported in the body of the claim which “generate[s] the property appraisal report for the subject property according to the appraisal report specification including each specified item in the specified location in the property appraisal report.” Because claim 1 considered as a whole recites the abstract idea of generating a property appraisal report (i.e., a fundamental economic practice with respect to real property transactions, as identified in Table One, supra), and because remaining independent claim 20 recites similar language of commensurate scope, we conclude all claims 1–20 on appeal recite an abstract idea, as identified above, under Step 2A, Prong One. Therefore, we proceed to Step 2A, Prong Two. 2019 Memorandum, Step 2A, Prong Two Integration of the Judicial Exception into a Practical Application Pursuant to the 2019 Memorandum, we consider whether there are additional elements set forth in the claims that integrate the judicial exception into a practical application. See 2019 Memorandum, 84 Fed. Reg. at 54–55. Appeal 2019-004728 Application 15/370,374 14 Additional Generic Computer Limitations As emphasized in bold in Table One, supra, we note the additional generic computer components recited in claim 1, for example: “a system,” “a portable computing device,” “a computer processor,” “a display screen,” and “an electronic network interface for receiving information over an electronic network.” Claim 1. We further note the supporting exemplary, non-limiting descriptions of generic computer components in the Specification, for example, at paragraphs 23 and 25. See paragraph 25: The portable computing device 107 is typically a smartphone, but could be any suitable portable device, such as a tablet. The camera 103 is capable of taking digital photographs and video clips under the control of the appraiser 100 using the portable computing device 107. Spec. ¶ 25 (emphasis added). We emphasize that McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), guides: “[t]he abstract idea exception prevents patenting a result where ‘it matters not by what process or machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). See, supra, Table One. MPEP § 2106.05(a) Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field Appellant contends: “The existence of a camera in the claimed invention that obtains video of a property that is the subject of the appraisal, Appeal 2019-004728 Application 15/370,374 15 and the insertion of that video in the report generated by the invention are critical specific requirements of the Appellant’s claims.” Appeal Br. 14. However, we find the absence of details regarding the claimed “portable computing device” described in paragraph 25 of the Specification (as reproduced above) indicates that it is a conventional generic computer component. See also: The network may be the internet, and at least some of the information about other properties designated by the appraiser to be comparable to the subject property may be obtained by the appraiser using an internet browser running on the portable computing device. The computer processor may receive the information about other properties directly from the internet browser. Spec. ¶ 8 (emphasis added). As set forth in MPEP § 2106.05(a): To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method . . . . Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. (Emphasis added). Here, we find Appellant does not persuasively argue or explain how the claims “recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a Appeal 2019-004728 Application 15/370,374 16 computer to the performance of the method.” MPEP § 2106.05(a) (emphasis added).7 As noted above, the absence of detail regarding the “portable computing device” recited in independent claims 1 and 20, as described in the supporting portions of the Specification (e.g., paragraphs 8, 25), indicates that the “portable computing device” is a generic computer. See Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017) (“The claimed mobile interface is so lacking in implementation details that it amounts to merely a generic component (software, hardware, or firmware) that permits the performance of the abstract idea, i.e., to retrieve the user-specific resources.”). An improved abstract idea is still an abstract idea. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 90 (2012) (holding that a novel and nonobvious claim directed to a purely abstract idea is, nonetheless patent-ineligible). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”) (Emphasis omitted); We note the “‘mere automation of manual processes using generic computers’ . . . ‘does not constitute a patentable improvement in computer technology.’” Trading Techs. Int’l v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (quoting Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). 7 Regardless of the general contentions and imputed intended meanings articulated by Appellant in the Brief(s), “[i]t is the claims that measure the invention.” See SRI Int’l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) (citations omitted). Appeal 2019-004728 Application 15/370,374 17 Simply adding generic hardware and computer components to perform abstract ideas does not integrate those ideas into a practical application, because the “mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 223; see 2019 Memorandum, 84 Fed. Reg. at 55 n.30. See also 2019 Memorandum, 84 Fed. Reg. at 55 (“merely includ[ing] instructions to implement an abstract idea on a computer” is an example of when an abstract idea has not been integrated into a practical application). Accordingly, on this record, we conclude independent system claim 1, and independent method claim 20, which recites similar limitations of commensurate scope, do not recite an improvement to the functionality of a computer or other technology or technical field. See MPEP § 2106.05(a). MPEP §§ 2106.05(c), 2106.05(e) Appellant advances no arguments that any of the method claims on appeal are tied to a particular machine, or transform an article to a different state or thing. See MPEP § 2106.05(c). MPEP § 2106.05(e) Meaningful Claim Limitations Nor does Appellant advance further substantive, persuasive arguments as to any particular “meaningful” claim limitations, such as those of the types addressed under MPEP § 2106.05(e), that impose meaningful limits on the judicial exception.8 8 See 2019 Memorandum, 84 Fed. Reg. at 55, citing MPEP § 2106.05(e): “[A]pply[ing] or us[ing] the judicial exception in some other meaningful Appeal 2019-004728 Application 15/370,374 18 MPEP § 2106.05(f) Merely including instructions to implement an abstract idea on a computer, or Merely using a computer as a tool to perform an abstract idea We conclude Appellant’s claimed invention merely implements the abstract idea using instructions executed on generic computer components, as depicted in bold type in Table One, and as supported in our reproduction of the Specification, paragraphs 8 and 25, supra. Therefore, we conclude Appellant’s claims merely use a programmed computer as a tool to perform an abstract idea. MPEP § 2106.05(g) Adding insignificant extra-solution activity to the judicial exception As mapped in the right column of Table One, supra, we conclude that representative independent claim 1 recites extra or post-solution activities that courts have determined to be insufficient to transform judicially excepted subject matter into a patent-eligible application. See MPEP § 2106.05(g); 2019 Memorandum, 84 Fed. Reg. at 55 n.31. For example, see Claim 1, Table One, supra, “receive” functions g–j. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”). That is, these way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.” (Emphasis added). Appeal 2019-004728 Application 15/370,374 19 limitations use a generic computer component that performs a generic computer function as a tool to perform an abstract idea. Thus, these limitations do not integrate the abstract idea into a practical application. See Alice, 573 U.S. at 223–24. Instead, these limitations perform insignificant extra-solution activities. Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1242 (Fed. Cir. 2016) (agreeing with the Board that printing and downloading generated menus are insignificant post-solution activities). See also Two-Way Media, 874 F.3d at 1341 (Streaming audio/visual data over a communications system like the Internet held patent ineligible.). MPEP § 2106.05(h) Generally linking the use of the judicial exception to a particular technological environment or field of use The Supreme Court guides: “the prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or [by] adding ‘insignificant postsolution activity.’” Bilski, 561 U.S. at 610–12 (quoting Diehr, 450 U.S. at 191–92). We note Appellant advances no arguments regarding a lack of preemption in the Appeal Brief. Appellant does not file a Reply Brief in further response to the Examiner additional explanations and findings. Nor do claims 1–20 on appeal present any other issues as set forth in the 2019 Memorandum regarding a determination of whether the additional generic computer elements integrate the judicial exception into a practical application. See 2019 Memorandum, 84 Fed. Reg. at 55. Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)– (h)), we conclude claims 1–20 do not integrate the judicial exception into a Appeal 2019-004728 Application 15/370,374 20 practical application. Therefore, we proceed to Step 2B, The Inventive Concept. The Inventive Concept – Step 2B Under the 2019 Memorandum, 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 adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or, simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) Berkheimer was decided by the Federal Circuit on February 8, 2018. On April 19, 2018, the PTO issued the Memorandum titled: “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter “Berkheimer Memorandum”).9 The Berkheimer Memorandum provided specific requirements for an Examiner to support with evidence any finding that claim elements (or a combination of elements) are well-understood, routine, or conventional. We note the Final Action was mailed on September 6, 2017, over four months before Berkheimer was decided by the Federal Circuit. 9 Available at https://www.uspto.gov/sites/default/files/documents/memo- berkheimer-20180419.PDF. Appeal 2019-004728 Application 15/370,374 21 The Examiner, under Step 2B, finds several additional elements recited in the claims are well understood, routine, and conventional. See Final Act. 10–11. In particular, the Examiner finds: “A portable computing device being a smartphone is well-understood, routine, and conventional in the art, and does not add anything significant to the abstract idea.” Final Act. 11. Appellant advances no arguments regarding Berkheimer in the Appeal Brief, which was filed on April 2, 2018, almost two months after Berkheimer was decided by the Federal Circuit. In the Answer, under Step 2B, the Examiner provides additional evidence in support of the findings set forth in the Final Action (10–11). In particular, the Examiner finds: the Specification references the components comprising the system as general-purpose off-the-shelf commercial products to execute the software program perform the function of retrieving a report specification, receiving information, and generating a report in accordance with specification requirements (0004, 0051-–0056). Ans. 6. The Examiner also finds: David [(U.S. Patent 9,536,254, filed June 13, 2013),] illustrates that it was well-understood, routine, and conventional prior to the effective filing date of the claimed invention for inspection personnel to use a mobile device, such as a telephone, smartphone, tablet computer, personal data assistant, handheld computer, personal computer, laptop computer, or other computing device, to collect inspection data, collect photographs and video which may be uploaded through proprietary software such as a mobile device or computer software application, to collect inspection data in a substantially standardized way, and that the inspection may require certain data. Appeal 2019-004728 Application 15/370,374 22 Ans. 7–8 (emphasis added). Appellant does not file a Reply Brief in further response. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Therefore, on the record before us, Appellant has not shown that the claims on appeal add a specific limitation beyond the judicial exception that is not well-understood, routine, and conventional, when the claim limitations are considered both individually and as an ordered combination. See MPEP § 2106.05(d). Because Appellant has not argued nor claimed an ordered combination of the recited conventional computer components, we likewise see no inventive concept in in any purported ordered combination of these limitations. See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) (“[A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”). In light of the foregoing, and under the 2019 Memorandum, we conclude that each of Appellant’s claims 1–20, considered as a whole, is directed to a patent-ineligible abstract idea that is not integrated into a practical application, and does not include an inventive concept. Therefore, we sustain the Examiner’s Rejection A under 35 U.S.C. § 101 of claims 1– 20. 10 10 For the reasons discussed above, grouped claims 2–20 (not argued separately) fall with representative independent claim 1 under 35 U.S.C. § 101. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-004728 Application 15/370,374 23 Rejection B of Claims 1–8, 14, and 16–20 under §103 Claim Grouping Based on Appellant’s arguments (Appeal Br. 13–19) and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of obviousness Rejection B of grouped claims 1–8, 14, and 16–20 on the basis of representative claim 1. We highlight and address specific findings and arguments for emphasis as follows. Appellant argues the Examiner’s rejection of claim 1 under 35 U.S.C. § 103 as being obvious over the combination of Stinson and Shaughnessy is in error. See Appeal Br. 15–16. Appellant’s contentions present us with the following issue: Did the Examiner err in finding that Stinson teaches or suggests “a portable communication device comprising: … a camera … and software” configured to “generate the property appraisal report” and “receive from the camera the video of a portion of the subject property,” within the meaning of representative claim 1? (emphases added). See supra, n.3 (we give the claim limitations the broadest reasonable interpretation consistent with the Specification. See Morris, 127 F.3d at 1054). Appellant contends the cited portions of Stinson relied upon by the Examiner in the Final Office Action (16) do not teach that “the one device, as claimed by the Appellant, [is used] to generate the report and insert video that it captures into the correct place.” Appeal Brief 15. Appellant further contends that, in Stinson, “the video and photographs are gathered separately by a photographer.” Id. (emphasis added). Appeal 2019-004728 Application 15/370,374 24 We note Appellant refers to and the Examiner relies upon Column 7, lines 4–11, of Stinson to teach or suggest the disputed limitation “receive from the camera the video of a portion of the subject property.” (see Final Act. 15–16). Based upon our review of the record, we find a preponderance of the evidence supports the Examiner’s finding that Stinson teaches or suggests: “receive from the camera the video of a portion of the subject property” within the meaning of claim 1. As found by the Examiner (Final Act. 16), Stinson teaches that “property data is gathered, validated, edited or corrected, and formatted in order to be able to generate an appraisal report. Property data is gathered in … audio, and video files. A trained professional (e.g., appraiser, photographer, videographer, or other) photographs (via a digital camera or video recorder) and prepares audio files about various pieces of property.” Stinson, Col. 7, ll. 4–11 (emphases added). Reviewing the evidence, we also find Stinson teaches, (column 2, lines 55–57), a “portable communication device configured to capture an image of the property,” which we note the Examiner further explains may be “a cellular telephone, such as an iPhone, a laptop computer, or other mobile device” that “includes a camera that captures … video” (see Final Act. 41; and Stinson, col. 12, ll. 36–43) (emphases added). Moreover, the Examiner points to, and we additionally find, that Stinson teaches the “appraiser may edit the report using web based software” and “send the edited report directly to [the] customer 107 via a portable communication device 1501” (see Final Act. 45–46; and Stinson, col. 12, ll. 25–26 and 44–48) (emphases added). Appeal 2019-004728 Application 15/370,374 25 An obviousness inquiry is not limited to the prior art’s preferred embodiment. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1370 (Fed. Cir. 2007). Moreover, “[c]ombining two embodiments disclosed adjacent to each other in a prior art patent does not require a leap of inventiveness.” Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d 982, 991 (Fed. Cir. 2009). “[I]n a section 103 inquiry, ‘the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered.’” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)). This reasoning is applicable here. Therefore, based upon a preponderance of the evidence, we find Stinson’s descriptions of an appraiser using a portable communication device (e.g., iPhone or laptop computer) for gathering property data and editing an appraisal report teaches or at least suggests a single “portable communication device comprising: a camera . . . and software” configured to “receive from the camera the video of a portion of the subject property” and “generate the property appraisal report,” within the meaning of claim 1. Appellant further asserts “the Examiner’s analysis, on page 18 of the Final Office Action, as pertaining to the limitation ‘receive via the network the information about other properties designated by the appraiser to be comparable to the subject property’ is not correct. Similarly, the related limitations recited in claim 2 are not disclosed in Stinson, as asserted by the Examiner.” Appeal Br. 15. However, Appellant does not substantively traverse the Examiner’s specific findings, by pointing out the supposed errors in the Examiner’s Appeal 2019-004728 Application 15/370,374 26 factual findings and explaining why the Examiner has erred. Mere conclusory statements that are unsupported by factual evidence are entitled to little probative value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.”). Appellant also contends that “Stinson is focused on a scoring system, which is completely unlike the Appellant’s claimed system. The purpose of Stinson’s invention is to calculate such scores.” Appeal Br. 15–16. However, it is sufficient that references suggest doing what Appellant did, although the Appellant’s particular purpose was different from that of the references. In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983) (citing In re Gershon, 372 F.2d 535, 539 (CCPA 1967)). For a prima facie case of obviousness to be established, the reference need not recognize the same problem solved by the Appellants. See In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996). The Supreme Court provides further guidance: “[N]either the particular motivation nor the avowed purpose of the [Appellant] controls” when performing an obviousness analysis. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). This reasoning is applicable here. Therefore, based upon a preponderance of the evidence, we sustain the Examiner’s obviousness Rejection B of independent representative claim 1, and also independent claim 20, which recites similar limitations of commensurate scope. See Final Act. 13–18. The remaining grouped dependent claims also rejected Appeal 2019-004728 Application 15/370,374 27 under Rejection B (and not argued separately) fall with representative independent claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, we sustain the Examiner’s obviousness Rejection B of claims 1–8, 14, and 16–20. Rejection C of Dependent Claim 9–13 and 15 under §103 In view of the lack of any substantive or separate arguments directed to obviousness Rejection C of claims 9–13, and 15 under § 103 (see Appeal Br. 16–17), we sustain the Examiner’s Rejection C of dependent claims 9–13, and 15. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSIONS The Examiner did not err in rejecting claims 1–20 under 35 U.S.C. § 101, as being directed to a judicial exception, without significantly more. The Examiner did not err in rejecting claims 1–20 as being obvious under 35 U.S.C. § 103, over the cited combinations of references. DECISION SUMMARY Rej Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed A 1–20 101 Eligibility 1–20 B 1–8, 14, 16–20 103 Stinson, Shaughnessy 1–8, 14, 16–20 C 9–13, 15 103 Stinson, Shaughnessy, TOTAL 9–13, 15 Overall Outcome 1–20 Appeal 2019-004728 Application 15/370,374 28 FINALITY AND 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)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation