Value Connect Inc.

Patent Trials and Appeals Board

May 11, 2020

2019004728 (P.T.A.B. May. 11, 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.
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