EKOTROPE INC.

Patent Trials and Appeals Board

Jun 1, 2021

2021000655 (P.T.A.B. Jun. 1, 2021)

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.
13/678,456 11/15/2012 Edward F. CRAWLEY 380218-991101 4410
26379 7590 06/01/2021
DLA PIPER LLP (US )
2000 UNIVERSITY AVENUE
EAST PALO ALTO, CA 94303-2248
EXAMINER
GUILIANO, CHARLES A
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/01/2021 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):
PatentDocketingUS-PaloAlto@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD F. CRAWLEY, CY HOADLEY KILBOURN,
ZIV ROZENBLUM, AMOS BENNINGA,
NICK SISLER, and BLAKE BISSON
Appeal 2021-000655
Application 13/678,456
Technology Center 3600
Before ELENI MANTIS MERCADER, JOHNNY A. KUMAR, and
JENNIFER S. BISK, Administrative Patent Judges.
BISK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–21. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b). This application was previously the
subject of an appeal, in which we affirmed the Examiner. See Appeal No.
2017-006372 (PTAB Dec. 21, 2018). Each of the claims was subsequently

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Ekotrope. Appeal
Br. 1.
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amended and Appellant represents that the current claims “are significantly
different from the claims adjudicated in the last appeal decision.” Appeal
Br. 1. We, therefore, analyze the current rejections independently from our
previous decision.
We affirm.
CLAIMED SUBJECT MATTER
The claims are directed to a green building system and method.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A green building design determining system, comprising:
a computer-implemented green building unit;
one or more client computing devices, each client
computing device having a processor and memory and being
capable of connecting to the green building unit over a link; and
the green building unit having a decision engine that
receives a set of building related inputs for a building project for
each client, defines a utility function for each client that is a score
based on a desire of the client, a financial goal of the client,
wherein the utility function is a goal for each client, a set of
weighted goals for each client or a combination of must meet
goals and nice to have goals, environmental awareness of the
client and code requirements of the client, automatically fills
missing building related inputs for the building project,
determines, based on received set of building related inputs and
the automatically filled in missing building related inputs, all
designs that meet the set of building related inputs including the
automatically filled in missing building related inputs and the
utility function for each client and generates a display with all of
the designs for the building project for the client that comply with
the utility function, wherein the display, in response to the user,
generates an interactive display for one or more designs
displaying a tradeoff between an annual energy bill and a cost for
each design.
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REJECTIONS
The Examiner rejected claims 1–21 under 35 U.S.C. § 101 as directed
to ineligible subject matter. Final Act. 14–17.
The Examiner rejected claims 1–21 under 35 U.S.C. § 103(a) as being
unpatentable over Kennedy (US 2004/0239494 A1, published Dec. 2, 2004),
Teller (US 2012/0323535 A1, published Dec. 20, 2012), and Krebs (US
2012/0078685 A1, published March 29, 2012). Final Act. 18–34.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
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.
THE § 101 REJECTION
Legal Framework
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
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To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claims for an “inventive concept,” “an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office issued guidance regarding this framework. See
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).2 Under the Revised Guidance,
to decide whether a claim is “directed to” an abstract idea, we evaluate
whether the claim (1) recites subject matter falling within an abstract idea
grouping listed in the Revised Guidance and (2) fails to integrate the recited
abstract idea into a practical application. See MPEP § 2106. If the claim is
“directed to” an abstract idea, as noted above, we then determine whether
the claim recites an inventive concept. The Revised Guidance explains that
when making this determination, we should consider whether the additional

2 The Manual of Patent Examining Procedure (“MPEP”) now incorporates
this revised guidance and subsequent updates at Section 2106. All references
to the MPEP are to the Ninth Edition, Revision 10.2019 (Last Revised June
2020), unless otherwise indicated.
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claim elements add “a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field” or
“simply append[] well-understood, routine, conventional activities
previously known to the industry.” Revised Guidance 56. In addition, the
Patent Office issued supplemental guidance on eligibility. October 2019
Update: Subject Matter Eligibility (available at
https://www.uspto.gov/sites/default/
files/documents/peg_oct_2019_update.pdf) (“October 2019 Guidance
Update”); see also USPTO, October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update).
For purposes of the § 101 rejection, Appellant argues all the claims as
a group. See Appeal Br. 5–8. We select claim 1 as representative. Claims
2–21 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv). Noting
claim 1 recites a system and claim 14 recites a method and, therefore, each
of the pending independent claims falls within a category of § 101, we turn
to the Examiner’s § 101 rejection.
The Judicial Exception—Abstract Idea
The Examiner concludes that the claimed invention is directed to “the
abstract idea of receiving user parameters including desires, financial goals,
environmental awareness, and code requirements, defining a utility function
that is a score based on the received user parameters, filling in missing
building inputs, analyzing the parameters and designs matching the utility
function, and presenting a final set of designs with the tradeoffs of energy
bill and cost of each design[].” Final Act. 14. According to the Examiner,
these functions “could all be reasonably interpreted as a human making
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observations of data” and are “directed to analyzing financial costs and
tradeoffs,” which fall within the categories of “fundamental economic
principals, commercial interactions, and human behavior.” Id. at 15. The
Examiner, thus finds that “the claims are directed to a certain method of
organizing human activity.” Id. In addition, the Examiner finds that the
recited utility function “is clearly a recitation of a mathematical formula and
relationship that generates a numerical value based on the aforementioned
received parameters,” and, thus, are directed to “mental processes . . . and
mathematical concepts.” Id. For the reasons explained below, we agree that
the claims recite an abstract idea.
According to the Specification, the invention overcomes problems
related to the time consuming process of identifying the best building
materials for green building. Spec. 2:1–13. Claim 1 includes four main
limitations. These limitations recite, in part, a green building unit having a
decision engine that: (1) receives a set of building related inputs for each
client (some of which may be automatically filled in); (2) determining based
on received inputs and a utility function, which is a score based on goals of
the client, all designs that meet the specified input and goals; (3) generating
a display with all the compliant designs; and (4) generating an interactive
display for one or more designs displaying a tradeoff between an annual
energy bill and a cost for each design. Appeal Br. 13 (Claims App.). Under
their broadest reasonable interpretation, all these limitations ([1]–[4])
contribute to a method of receiving, analyzing, and displaying characteristics
of data for the purpose of choosing a particular design based on economics,
which is a longstanding commercial practice. Such activity has been found
to be an abstract idea. See, e.g., Elec. Comm’n Techs., LLC v.
ShoppersChoice.com, LLC, 958 F.3d 1178, 1181 (Fed. Cir. 2020) (holding
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that claims monitoring the location of a mobile thing and notifying a party in
advance of arrival of that mobile thing “amount[s] to nothing more than the
fundamental business practice of providing advance notification of the
pickup or delivery of a mobile thing”).
In addition, the subject matter of claim 1 is similar to cases in which
the Federal Circuit found the claims were directed to mental processes
including, (1) collecting information (here, receiving building related
inputs), (2) analyzing the information (here, calculating the utility function
score and using the inputs and score to find compliant designs), and (3)
reporting the results (here, displaying the compliant designs and tradeoffs
between one or more designs). See, e.g., SAP Am., Inc. v. InvestPic, LLC,
898 F.3d 1161, 1167 (Fed. Cir. 2018) (“[S]electing certain information,
analyzing it using mathematical techniques, and reporting or displaying the
results of the analysis” is abstract.); Intellectual Ventures I LLC v. Cap. One
Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) (“[O]rganizing, displaying,
and manipulating data of particular documents” is abstract.); FairWarning
IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093 (Fed. Cir. 2016) (“[T]he
realm of abstract ideas” includes “collecting information,” “analyzing
information,” and “presenting the results.”); Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (“[The] process of
gathering and analyzing information of a specified content, then displaying
the results” is abstract.).
Appellant contends that the claims are not directed to an abstract idea
because they do not recite a mental process, organizing human behavior, or a
mathematical function. According to Appellant, the claims recite
“automatically fills missing building related inputs for the building project”
and generating an interactive display, which cannot practically be performed
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in the human mind. We do not agree that automatically filling in missing
building related inputs cannot be done by the human mind. A person can
understand and use default values for various inputs for a building project.
See Ans. 6 (“[A] human can certainly use their mental judgment to fill in
missing building inputs for the project from memory, a human can provide
their evaluation and judgment of a tradeoff between annual energy and cost
for each design, and a human can present that judgment and evaluation using
a pen and paper.”). The Examiner also points out that “automatically” “may
refer to a human subconsciously or spontaneously filling in the missing
building inputs.” Id. In addition, although a person cannot, using a mental
process, generate an interactive display, this element is analyzed below as an
“additional element” beyond the recited abstract idea and we determine it is
insignificant extra-solution activity. Revised Guidance 55, n.31; MPEP
§§ 2106.04(d), 2106.05(f), (g); see also Ans. 7.
Moreover, Appellant does not dispute that determining the utility
function score and using that score to find compliant designs are
mathematical determinations that can be done by mental processes. Appeal
Br. 6 (“In the present application, the general process of green building
design may be performed by a human being . . . .”); see also Spec. 9:1–7
(“The utility function can be one goal, a set of weighted goals that include
cost, desired payback, environmental goals, convenience etc. (For example,
a utility function can be defined as a sum of 20% upfront cost reduction,
30% payback period reduction, 50% CO2 emission reduction) . . . .”).
Appellant also argues that because the exemplary cases in the Revised
Guidance do not include an example similar to the subject matter recited by
claim 1, they do not fall within the category of organizing human behavior.
Appeal Br. 5–6. We disagree. As mentioned above, receiving, analyzing,
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and displaying data for the purpose of choosing a particular design based on
economics is a longstanding commercial practice. Such activity, whether or
not it is explicitly listed as an example in the Revised Guidance, may qualify
as a certain method of organizing human activity identified in the Revised
Guidance (a commercial interaction), and thus, an abstract idea.
Accordingly, we conclude claim 1 recites a method of organizing
human activity and also a mental process, each of which are listed in the
abstract idea groupings in the Revised Guidance. See Revised Guidance, 84
Fed. Reg. at 52. Claim 1 thus recites an abstract idea.
Integration of the Judicial Exception into a Practical Application
If a claim recites a judicial exception, we determine whether the
recited judicial exception is integrated into a practical application of that
exception by: (a) identifying whether there are any additional elements
recited in the claim beyond the judicial exception(s); and (b) evaluating
those additional elements individually and in combination to determine
whether they integrate the exception into a practical application. If the
recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.
Here, claim 1 recites the additional elements “one or more client
computing devices, each client computing device having a processor and
memory and being capable of connecting to the green building unit over a
link” and “generates a display with all of the designs for the building project
for the client that comply with the utility function.” Appeal Br. 13 (Claims
App.). Considering claim 1 as a whole, we agree with the Examiner (Final
Act. 15–16) that the additional elements do not apply or use the abstract idea
in a meaningful way such that the claim as a whole is more than a drafting
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effort designed to monopolize the exception. The Supreme Court guides
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 [by] adding ‘insignificant postsolution
activity.’” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (quoting
Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)).
The Examiner states that each of the additional elements when viewed
separately or as an ordered combination “are computing elements recited at
[a] high level of generality implementing the abstract idea on a computer
(i.e. apply it), and thus, are no more than applying the abstract idea with
generic computer components.” Final Act. 16–17. The Specification
supports this finding. For example, the Specification states that “each client
computing device 102 may be [a] SmartPhone device (Apple® product
(iPhone, iPad, etc.), RIM® product (Blackberry), Android® OS based
devices, etc.), a cellular phone device, a personal computer, a tablet
computer and the like,” and “may have a typical browser application.” Spec.
3:22–4:1; see also 4:2–27 (describing the system in terms of conventional
computer hardware and software). The recited display is described only in
that “[e]ach client computing device may be a processing unit based device
with sufficient . . . display capability.” Id. at 3:20–22. Moreover, we agree
with the Examiner (Final Act. 16) that the displaying limitations constitute
insignificant extrasolution activity.
Appellant’s arguments have not persuaded us claim 1 is “directed to”
a patent-eligible concept. Appellant argues that claim 1 recites “additional
features that cannot be performed by a human being and result in an
improvement in the green building design technology.” Appeal Br. 6–7
(citing McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299
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(Fed. Cir. 2016)). We do not find Appellant’s reliance on McRO persuasive.
In McRO, the claimed process used a combined order of specific rules that
rendered information in a specific format that was applied to create a
sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques—an improvement over manual three-
dimensional animation techniques that were not directed to an abstract idea.
Id. at 1316.
But unlike McRO that improved how the physical display operated to
produce better quality images, the claimed invention here analyzes
information to determine the desirability of a design based on certain
goals—a determination that is not only directed to a fundamental economic
practice that may be done by a mental process, but also does not improve a
display mechanism as was the case in McRO. Although the claimed
invention requires computer components, it is the incorporation of those
components—not a claimed rule—that purportedly improves the existing
process. Cf. FairWarning, 839 F.3d at 1095.
In short, the claimed invention does not solve a technical problem, but
rather solves a business problem, namely analyzing green building designs.
Ans. 5–8. The Examiner’s point in this regard is well taken. Although the
claimed invention may be beneficial as Appellant contends, a claim for a
useful or beneficial abstract idea is still an abstract idea. See Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379–80 (Fed. Cir.
2015).
Appellant asserts that claim 1 also has limitations that “meaningfully
limit the judicial exception” under MPEP § 2106.05(e). Appeal Br. 7.
Appellant compares claim 1’s limitations of “automatic filling in of inputs
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and the interactive display” to the “improved user interface in the CAFC
Core Wireless case.” Id. at 8. We are not persuaded that claim 1 is similar
to the subject matter found patent eligible in Core Wireless. Displaying
designs found to be compliant to the user’s needs and allowing interactive
comparison of those designs, unlike the claims held patent eligible in Core
Wireless, are not directed to any particular manner of summarizing and
presenting information or to an improved display interface. Core Wireless
Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1359–63 (Fed. Cir.
2018). Instead, these limitations simply recite insignificant extra-solution
activity to abstract idea. MPEP § 2106.05(g); Affinity Labs of Texas, LLC v.
DirecTV, LLC, 838 F.3d 1253, 1261 (Fed. Cir. 2016); OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015).
Appellant has not shown a non-conventional arrangement of the
generic client computing device and display recited in the claims on appeal.
As BASCOM recognized, claims like these that “merely recite the abstract
idea . . . along with the requirement to perform it on . . . a set of generic
computer components” do not contain an inventive concept. BASCOM
Global Internet Services v. AT&T Mobility, LLC, 827 F.3d 1341, 1350 (Fed.
Cir. 2016).
For these reasons, we conclude that claim 1 does not integrate the
recited abstract idea into a practical application.
Inventive Concept
Because we agree with the Examiner that claim 1 is “directed to” an
abstract idea, we consider whether an additional element (or combination of
elements) adds a limitation that is not well-understood, routine, conventional
(“WURC”) activity in the field or whether the additional elements simply
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append WURC activities previously known to the industry, specified at a
high level of generality, to the judicial exception. MPEP § 2106.05(d). The
Examiner’s finding that an additional element (or combination of elements)
is WURC activity must be supported with a factual determination. Id.
Whether the additional elements (“one or more client computing
devices, each client computing device having a processor and memory and
being capable of connecting to the green building unit over a link” and
“generates a display with all of the designs for the building project for the
client that comply with the utility function”) are WURC activity is a
question of fact. See Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir.
2018) (“Whether something is well-understood, routine, and conventional to
a skilled artisan . . . is a factual determination.”).
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
WURC in the field, whether the limitations are considered individually or as
an ordered combination (see MPEP § 2106.05(d)). Appellant argues that
“the automatic filling of the missing building related inputs (see
specification for examples) is an improvement to a building industry
technical process that is not conventional or well known in the building
industry” and claim 1 “as a whole recite[s] a combination [of] processes
(including the automatic fill in and interactive display) that are together
unconventional, not routine or not well understood in the building industry.”
Appeal Br. 8.
To the contrary, Appellant’s Specification demonstrates the WURC
nature of the additional elements (“one or more client computing devices,
each client computing device having a processor and memory and being
capable of connecting to the green building unit over a link” and “generates
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a display with all of the designs for the building project for the client that
comply with the utility function”) because it indicates they may be
implemented with generic devices. Spec. 3:17–4:27. That the Specification
indicates that standard off-the-shelf computer technology is usable to
implement the claimed invention only bolsters the notion that the claimed
invention does not focus on an improvement in computers as tools, but
rather certain independently abstract ideas that use computers as tools. Spec.
4:1–27; see Elec. Power, 830 F.3d at 1354.
Consequently, even if we were to agree with Appellant that the claim
recites a particularly novel and useful method for green building design, the
Examiner determines, and Appellant does not persuasively refute, that the
computer implementation of the claimed methodology requires only
computer equipment and functions that are well-understood, routine, and
conventional, such as storing, receiving, processing, and displaying data.
Final Act. 15–17; Ans. 12–14; see, e.g., Intellectual Ventures, 850 F.3d at
1341 (“Rather, the claims recite both a generic computer element—a
processor—and a series of generic computer ‘components’ that merely
restate their individual functions—i.e., organizing, mapping, identifying,
defining, detecting, and modifying.”); Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 716 (Fed. Cir. 2014) (“Instead, the claimed sequence of steps
comprises only ‘conventional steps, specified at a high level of generality,’
which is insufficient to supply an ‘inventive concept.’” (quoting Alice,
573 U.S. at 222)); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352, 1355
(Fed. Cir. 2014) (finding computer-implemented system for guaranteeing
performance of an online transaction to be ineligible).
For these reasons, the limitations of claim 1—considered both
individually and as an ordered combination—do not contain an “inventive
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concept” sufficient to transform the claimed abstract idea into a patent-
eligible application.
Conclusion
Therefore, we sustain the Examiner’s § 101 rejection of independent
claim 1. We also sustain the Examiner’s § 101 rejection of independent
claim 14 and dependent claims 2–13 and 15–21, for which Appellant relies
on the same arguments made with respect to claim 1. Appeal Br. 11.
THE § 103 REJECTION
The Examiner rejects claims 1–21 as obvious over the combination of
Kennedy, Teller, and Krebs. Final Act. 18–34; Ans. 15–27. Appellant
directs their arguments to the limitations of independent claims 1 and 14.
See Appeal 11; Reply Br. 6–8. Claims 2–13 and 15–21 stand or fall with
claims 1 and 14. See 37 C.F.R. § 41.37(c)(1)(iv).
Claims 1 and 14 recite “a utility function for each client that is a score
based on a desire of the client, a financial goal of the client, wherein the
utility function is a goal for each client, a set of weighted goals for each
client or a combination of must meet goals and nice to have goals,
environmental awareness of the client and code requirements of the client”
(the “utility function” limitation). The Examiner relies on Kennedy as
disclosing providing ranking of building simulation runs based on various
goals and requirements specified by the user. Final Act. 19, 21 (citing
Kennedy ¶¶ 25, 28, 30, 58–62, 67, 70). Because Kennedy does not
explicitly disclose that the utility function is a “score based on a desire of the
client, a financial goal of the client, environmental awareness of the client
and code requirements of the client,” the Examiner relies on Teller for
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disclosing this portion of the limitation. Final Act. 21 (citing Teller Figs. 2,
7, ¶¶ 42–44, 56, 60), 23; Ans. 15–22.
The Examiner explains that “it would have been obvious to one of
ordinary skill in the art to include in the building design energy analysis
system of Kennedy a utility function that generates a score based on a
financial goal of the client and environmental awareness of the client as
taught by Teller since the claimed invention is merely a combination of old
elements.” Final Act. 22. The Examiner adds that such a modification
would “provide the added benefit of improving efficiency and effectiveness
in the communication and work processes taking place in the community of
people and agencies involved in the design and construction process.” Id.
(citing Teller ¶ 8).
Appellant argues that the cited references do not teach the utility
function limitation because “at most, Kennedy discloses that the model of
the building is optimized for a parameter” and “the parameters used to
generate the quality or fitness function (alleged to be akin to the claimed
utility function score) in Teller are static” and not different for each client.
Appeal Br. 9–10 (citing Kennedy ¶¶ 21, 22, 25, 30; Teller ¶¶ 56, 59; Reply
Br. 6–7).3
Appellant’s arguments do not persuade us of Examiner error because
they attack the references individually, while the Examiner relies on the
combined disclosures in the references to reject the independent claims. See
Final Act. 19–21. Where a rejection rests on the combined disclosures in the
references, an appellant cannot establish nonobviousness by attacking the

3 We note that Appellant’s arguments regarding the § 103 rejection in the
Reply Brief appear to be exactly the same as those in the Appeal Brief.
Compare Appeal Br. 9–10, with Reply Br. 6–7.
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references individually. See In re Merck & Co., 800 F.2d 1091, 1097
(Fed. Cir. 1986). Here, the combined disclosures in Kennedy and Teller
teach the disputed receiving parameters limitation. See Final Act. 19–21;
Ans. 15–16.
Moreover, we agree with the Examiner (Ans. 12–13) that Kennedy is
not restricted to optimizing based on a single parameter. For example, in
Kennedy, “the user may specify, via the GUI, optimization parameters (i.e.
receiving building related inputs for optimizing the design of a building and
any information in the model of the building (i.e. building related inputs) can
be specified as an optimization parameter.” Ans. 16 (citing Kennedy ¶ 67),
19; see also Appeal No. 2017-006372, at 13. In addition, Kennedy discusses
running multiple simulations “to exhaust all combinations of parameters
and/or to optimize a given set of building features” and ranking results
according to “criteria such as energy efficiency, cost savings, project cost,
and/or other suitable factors.” Id. ¶ 70 (emphases added).
We also agree with the Examiner (Ans. 19–21) that Teller is not
restricted to static parameters that are not variable for different users. Teller
states that “[s]ystem 50 may provide each user with a customizable attributes
quantification interface” and “[i]n general, attributes of a structure will be
the same across users . . . [t]he ability to change attributes would be a matter
of permission within the system.” Teller ¶¶ 55, 59. We agree with the
Examiner that “even though the attributes may be the same across all users
of the system for a particular structure, the attributes may also be different
for each user and need not be the same for each developer (i.e. client) across
different structures.” Ans. 21; see also Appeal No. 2017-006372, at 13.
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We are, therefore, not persuaded of error in the Examiner’s finding
that a combination of Kennedy and Teller discloses the utility function
limitation.
Claims 1 and 14 also recite “automatically fills missing building
related inputs for the building project” (the “automatically fills limitation”).
The Examiner relies on Kennedy for this limitation stating that “defaults
component 108 can automatically populate the model with intelligent
defaults.” Final Act. 19 (citing Kennedy ¶¶ 25, 58–62).
Appellant argues that Kennedy’s defaults component auto-populates
defined inputs to the model, not missing building inputs, and, therefore, does
not disclose the automatically fills limitation. Appeal Br. 11. Appellant
appears to argue that the claim language requires that missing inputs must
first be discovered to be missing prior to being automatically filled. Id.
(stating “missing building inputs (which are first discovered to be
missing)”).
The Examiner points to language in the Specification stating that
“[d]efaults will be provided for missing data if allowed,” and concludes that,
“in view of the Specification, the missing input are defaults sent as input for
analysis.” Ans. 23 (quoting Spec. 10:26–28). According to the Examiner, in
Kennedy, the automatically populated defaults “are ‘missing’ from the
model prior to the defaults being automatically populated in the model.” Id.
Thus, the Examiner does not agree that the claim language requires that
missing inputs must first be discovered to be missing prior to being
automatically filled.
In Reply, Appellant argues that the Examiner relies on the wrong
portion of the Specification for interpreting the automatically fills limitation.
Reply Br. 8. According to Appellant, the relevant disclosure in the
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Specification is on page 7, which describes a user “ask[ing] the system to
‘fill-in’ [any gaps in data] using a smart algorithm.” Id. (quoting Spec.
7:11–17).4
We agree with the Examiner that nothing in the claim language or the
Specification requires that missing building related inputs must be first
determined to be missing prior to being automatically filled. The
Specification’s description of a user asking the system to fill in missing data
(see Spec. 8:19–25) provides an example of how missing data may be dealt
with, but we are not persuaded that this description limits the automatically
fills limitation to this implementation. Moreover, Appellant does not
explain why the language relied upon by the Examiner on page 10 of the
Specification is irrelevant to the interpretation of the automatically fills
limitation. We are, therefore, not persuaded of error in the Examiner’s
finding that Kennedy discloses the automatically fills limitation.
Claims 1 and 14 also recite “wherein the display, in response to the
user, generates an interactive display for one or more designs displaying a
tradeoff between an annual energy bill and a cost for each design” (the
“interactive display limitation”). The Examiner relies on both Kennedy and
Krebs as teaching the interactive display limitation. Final Act. 20 (citing
Kennedy ¶¶ 67, 77), 22 (citing Krebs ¶¶ 128–129).
Appellant argues that neither Kennedy nor Teller discloses the
interactive display limitation. Appeal Br. 11. In particular, Appellant argues
that Kennedy does not disclose an “interactive display that displays the
[tradeoff] between the energy bill and the cost.” Id. As noted by the
Examiner (Ans. 25–26), Appellant, however, does not address the

4 The quoted language actually appears at Spec. 8:19–25.
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Examiner’s reliance on Krebs in combination with Kennedy for this
limitation. Id. Appellant also does not address this limitation in the Reply
Brief. See Reply Br. 5–8. We are, therefore, not persuaded of error in the
Examiner’s finding that a combination of Kennedy and Krebs discloses the
interactive display limitation.
For these reasons, we are not persuaded of any error in the Examiner’s
rejection of independent claims 1 and 14. Appellant does not argue claims
2–13 and 15–21 separately with particularity. Appeal Br. 11. Thus, for the
same reasons as discussed with respect to independent claims 1 and 14,
Appellant’s arguments are not persuasive of error in the Examiner’s
determination.
CONCLUSION
We affirm the Examiner’s decision to reject claims 1–21.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–21 101 Eligibility 1–21
1–21 103(a) Kennedy, Teller,
Krebs
1–21
Overall
Outcome
1–21

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