Ex Parte Walker

Patent Trials and Appeals Board

Jun 5, 2019

11846149 - (D) (P.T.A.B. Jun. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/846,149 08/28/2007
23409 7590 06/07/2019
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Michael J. Walker
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
206302-9003-USOl 9900
EXAMINER
MINCARELLI, JAN P
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
06/07/2019 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. WALKER
Appeal2018-003437
Application 11/846, 149 1
Technology Center 3600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
GALLIGAN, Administrative Patent Judge.
DECISION ON APPEAL
Introduction
Appellant appeals under 35 U.S.C. § 134(a) from a non-final rejection
of claims 1, 3, 5, 8, 9, 11-14, 16, 19-21, 23-28, 32, 34, and 37--47, which
are all of the claims pending in the application. We have jurisdiction under
35 U.S.C. § 6(b). Claims 2, 4, 6, 7, 10, 15, 17, 18, 22, 29-31, 33, 35, and 36
have been cancelled.
WeAFFIRM. 2
1 According to Appellant, the real party in interest is SpaceLogik, LLC.
App. Br. 3.
2 Our Decision refers to Appellant's Appeal Brief filed October 12, 2017
("App. Br."); Appellant's Reply Brief filed February 13, 2018 ("Reply Br.");
Examiner's Answer mailed December 14, 2017 ("Ans."); and Non-Final
Office Action mailed September 16, 2016 ("Non-Final Act.").
Appeal2018-003437
Application 11/846, 149
STATEMENT OF THE CASE
Claims on Appeal
Claims 1, 12, and 32 are independent claims. Claim 1 is reproduced
below.
1. A system for obtaining proposed lease terms for a tenant from
a landlord comprising:
a. a tenant workstation;
b. a landlord workstation;
c. a server in communication with the tenant and landlord
workstations, said server configured to
i) receive tenant information, from the tenant workstation,
including financial information relating to credit worthiness of
the tenant, and permits a landlord to input landlord information
using the landlord workstation;
ii) receive landlord information, from the landlord
workstation;
iii) permit the tenant to input requested terms of a real
estate commission agreement between the tenant and the
landlord;
iv) permit the landlord to review the terms of the real estate
commission agreement between the tenant and the landlord;
v) prompt the landlord to electronically accept the terms
of the real estate commission agreement between the tenant and
the landlord;
vi) prevent the landlord from viewing the financial
information relating to the credit worthiness of the tenant and
submitting proposed lease terms to the tenant unless and until
receiving the landlord's acceptance of the terms of the real estate
commission agreement between the tenant and the landlord;
vii) after receiving acceptance of the terms of the real
estate commission agreement between the tenant and the
landlord, permit the landlord to view the financial information
relating to the credit worthiness of the tenant prior to submitting
proposed lease terms viii) permit the tenant to select a plurality
of requested lease terms and a plurality of building questions
using the tenant workstation;
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ix) prompt the landlord to answer all of the plurality of
requested lease terms and all of the plurality of building
questions;
x) prevent the landlord from submitting proposed lease
terms in response to the plurality of requested lease terms unless
and until receiving answers to all of the plurality of building
questions; and
xi) prevent the landlord from submitting the proposed
lease terms unless and until receiving proposed lease terms for
all of the plurality of requested lease terms;
xii) receive from the landlord workstation the proposed
lease terms for all of the plurality of requested lease terms and
the answers to all of the plurality of building questions as a first
proposal;
xiii) repeat (iv}-(vii) and (viii}-(xii) between the tenant
and at least one additional landlord to receive at least one
additional proposal, the at least one additional proposal including
the proposed lease terms for all of the plurality of requested lease
terms and answers to all of the plurality of building questions;
xiv) display the first proposal and the at least one
additional proposal on the tenant workstation, wherein the first
proposal and the at least one additional proposal each include the
proposed lease terms for all of the plurality of requested lease
terms and the answers to all of the plurality of building questions
in a predefined format and wherein the first proposal and the at
least one additional proposal are displayed in the predefined
format that allows the tenant to directly compare the first
proposal and the at least one additional proposal;
xv) display a tenant progress bar on the tenant workstation
showing multiple tenant stages of a multi-stage, ordered lease
procurement process and indicating a current tenant stage of the
multiple tenant stages; and
xvi) display a landlord progress bar on the landlord
workstation showing multiple landlord stages of the multi-stage,
ordered lease procurement process and indicating a current
landlord stage of the multiple landlord stages.
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Donahue
Amend
Florance et al.
Jacobson et al.
References
US 2002/0095311 Al
US 2003/0004861 Al
US 2005/0203768 Al
US 2006/0161482 Al
July 18, 2002
Jan.2,2003
Sept. 15, 2005
July 20, 2006
Steven Susser, Commission Agreements: Beware of Contract
Language, Heartland Real Estate Business (2004) ("Heartland").
Examiner's Re;ections
Claims 1, 3, 5, 8, 9, 11-14, 16, 19-21, 23-28, 32, 34, and 37--47 stand
rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject
matter. Non-Final Act. 3-5.
Claims 1, 3, 5, 8, 9, 11-14, 16, 19-21, 23, 26-28, 32, 34, and 43--47
stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Amend,
Donahue, Heartland, and Jacobson. Id. at 6-26.
Claims 24, 25, and 37--42 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Amend, Donahue, Heartland, Jacobson, and
Florance. Id. at 26-34.
Principles of Law
An invention is patent eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
the following implicit exceptions: laws of nature, natural phenomena, and
abstract ideas. Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,216 (2014).
In Alice, the Supreme Court set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
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abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). The first step in the analysis is to
"determine whether the claims at issue are directed to one of those patent-
ineligible concepts." Id. at 217. If the claim is "directed to" an abstract
idea, we tum to the second step of the Alice and Mayo framework, where
"we must examine the elements of the claim to determine whether it
contains an 'inventive concept' sufficient to 'transform' the claimed abstract
idea into a patent-eligible application." Alice, 573 U.S. at 221.
USPTO January 7. 2019 Revised Section 1 OJ Memorandum
The USPTO recently published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) ("2019 Guidance"). Under the 2019 Guidance,
we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
activity such as a fundamental economic practice, or mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
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
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( 4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
ANALYSIS
35 U.S.C. § 101: Claims 1. 3. 5. 8. 9. 11-14. 16.
19-21, 23-28, 32, 34, 4µ4, and 47
Appellant argues the independent claims as a group, specifically
addressing the limitations of claim 1. See App. Br. 16, 22-23. We select
independent claim 1 as representative of Appellant's arguments for
independent claims 1, 12 and 32. See 37 C.F.R. § 4I.37(c)(1)(iv)(2016).
The Examiner determines the claims are directed to an abstract idea.
Non-Final Act. 2--4; Ans. 5-13. The Examiner also determines "the
structural elements" recited in the claims, "when taken in combination with
the functional elements ... , together do not offer 'significantly more' than
the abstract idea itself." Non-Final Act. 4--5; Ans. 13-16.
Appellant presents several arguments against the § 101 rejection. The
Examiner has provided a comprehensive response to Appellant's arguments.
See Ans. 5-16. We do not find Appellant's arguments persuasive, as
discussed in greater detail below. We analyze the claims under the 2019
Guidance and adopt the nomenclature for the steps used in the 2019
Guidance.
STEP 1
Section 101 provides that "[ w ]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
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new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title." 35 U.S.C. § 101. Here, the
Examiner determines, and we agree, that "[c]laims 1, 3, 5, 8, 9, 11, 37, and
40 are directed to a system (i.e., machine), [c]laims 12-14, 16, 19-21, 23-
28, 38, 41, and 43--47 are directed to a method (i.e., process), and [c]laims
32, 34, 39, and 42 are directed to a non-transitory machine readable medium
(i.e., an article of manufacture)." Non-Final Act. 3. Accordingly, we also
agree with the Examiner that "each of the claims falls within one of the four
statutory categories" of invention within 35 U.S.C. § 101. Id.
STEP 2A Prong 1
Under Step 2A, Prong 1 of the Memorandum, we must determine
whether claim 1, being directed to a statutory class of invention, nonetheless
falls within a judicial exception.
We agree with the Examiner's determination that claim 1 recites steps
in a process for "the negotiation of a commercial lease," which amounts to
managing interactions between people, and, therefore, falls into the abstract-
idea category of certain "method[s] of organizing human activities." Non-
Final Act. 3--4; Ans. 5---6, 8-9.
Appellant argues that the "present application is not directed to mere
lease negotiation on the Internet or on a computer" but is instead "directed
to an improvement in the way that online lease proposal and negotiation
systems operate." App. Br. 15; see Reply Br. 3.
We are not persuaded by Appellant's argument. The Specification
supports the Examiner's determination that the claim recites steps for lease
negotiations between parties. The Specification outlines a traditional lease
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negotiation process between a tenant and a landlord. Spec. ,r,r 3-9. The
Specification then describes "problems that exist with the current method
and process of moving from the request for proposal to an executed lease
document" and describes that "improvements and efficiencies can be made
to most steps of the process." Id. ,r 10; see id. ,r,r 11-18. Notably, the
problems and improvements suggested by the Specification focus on
problems and improvements to the leasing process, not to computer
technology. For example, the Specification describes that "if a Tenant
would deliver the request for [ a lease] proposal ONLY after receiving an
acceptable commission agreement from the Landlord, the Tenant would end
up with more favorable commission agreements" and would "eliminate time
wasted arguing." Id. ,r 12.
Aligning with the Specification's description, the limitations recited in
claim 1 also support the Examiner's determination that the claim recites
managing interactions between people through, in this case, a lease
negotiation process. Non-Final Act. 3--4. Putting aside the computing
components recited in the claim, which we consider at a later step, e.g., "a. a
tenant workstation; b. a landlord workstation; c. a server," sixteen process
steps remain, i.e., claim limitations i) - xvi). Those sixteen process steps all
recite steps in the management of interactions between people, specifically
the formation and negotiation of a lease. For example, claim limitations i)
and ii) gather information relevant to a lease, i.e., "tenant information ...
including financial information" and "landlord information." Gathering the
information underlying a contract-in this case, a lease-is required for the
negotiation process in most, if not every, type of contract. Claim limitations
iii)-v) recite steps describing the execution of a real estate commission
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agreement. Presenting terms of a lease agreement for review and
consideration are basic steps in the negotiation of a lease. Claim limitations
vi) and vii) recite steps that prevent lease negotiation advancement until the
tenant's proposed terms for a real estate commission agreement are accepted
by the landlord. The process of requiring an earlier step to be completed
before advancing to the next step is a process for managing a leasing
process, i.e., a "forced workflow," as Appellant calls it. App. Br. 15.
Forcing parties to perform steps in a particular order is a way to organize the
interaction between the parties, and in these claim limitations, organizes the
lease negotiation process between the parties. Claim limitations vii)- ix)
and xii) recite steps describing processes for obtaining requisite information
that is considered for the lease. As discussed previously, obtaining
information considered in the lease is part of any lease negotiation and
formation. Claim limitations x) and xi) again recite steps that prevent lease
negotiation advancement until earlier steps are completed. As with
limitations vi) and vii, here, forcing the parties to perform steps in a
particular order organizes the negotiation process between the parties.
Claim limitations xiii) and xiv) recite a process of receiving an additional
leasing proposal and providing the additional proposal for comparison.
Receiving multiple lease proposals to compare is a common activity in the
negotiation of a lease. Finally, claim limitations xv) and xvi) recite
processes of providing the progress in the leasing process to the parties.
Providing status updates is common in lease negotiations. Accordingly,
limitations i)- xvi) recite processes for negotiating and forming a lease, i.e.,
a type of contract. The formation of such a contract involves the
management of interactions between people, which is a certain method of
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organizing human activity, as identified in the 2019 Guidance. Therefore,
we determine the claim recites an abstract idea.
STEP 2A Prong 2
Next, we determine whether the claim is directed to the abstract
concept itself or whether it is instead directed to some technological
implementation or application of, or improvement to, this concept, i.e.,
integrated into a practical application. See, e.g., Alice, 573 U.S. at 223
(discussing Diamond v. Diehr, 450 U.S. 175 (1981)).
The Examiner determines claim 1 does not recite an "improvement to
[a] computer; rather, the improvement lies in the abstract idea of collecting
data for negotiation of a commercial lease." Ans. 12; Non-Final Act. 35-36.
Appellant argues "the claimed features provide specified
improvements to technologies in the marketplace, notably, to existing online
lease proposal and negotiation systems." App. Br. 18; Reply Br. 3. In
particular, Appellant asserts that the claimed invention "improves the
efficiency of the data exchanges by reducing data transmissions and network
traffic, reduces computer resource usage of the tenant and landlord, and
provides improved reporting capabilities" and "provides improved data
collection ... , which enable[s] improved data evaluation." App. Br. 18-19;
Reply Br. 3--4.
Appellant's arguments do not persuade us that the claim integrates the
abstract idea into a practical application by improving technology or
otherwise transforms the claims into patent-eligible subject matter.
Although Appellant argues that "[ o ]nline systems, including online lease
proposal and negotiation systems, are certainly technological areas that can
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be improved" (Reply Br. 3; see App. Br. 17), the claim here is not focused
on improving the online aspect of those systems, i.e., the servers and
workstations implementing the online leasing systems. Rather, the
improvements are to a certain method of organizing human activities, i.e.,
managing interactions between people in the lease negotiation process itself.
As discussed above, the "improvements and efficiencies [are] made to most
steps of the process" for negotiating a lease (Spec. ,r 10), rather than the
computers implementing the process. Further, although Appellant alleges
the claimed process improves computing systems because the process results
in "fewer data processing operations" (Reply Br. 4; App. Br. 18), as the
Examiner explains, "the computer is not operating more quickly or with less
resources based upon any improvement to the computer" (Ans. 12). The
alleged "fewer" operations performed in the claimed leasing process result
from different processes with different steps being performed, not from
improvement in the functioning of the computer. That is, the steps of the
process purportedly make the leasing negotiation process faster and more
efficient, not the technology implementing the online system.
Furthermore, Appellant's argument that "the application ties the
forced workflow to the noted improvements in technology, stating, 'The
system ... , by use of mandatory field entries ... forces the landlord ( or
landlord's rep) to submit information in a specific order and format such
that detailed reports and building comparisons can be generated"' (App.
Br. 20 (citation omitted)) is not commensurate with the scope of the claim.
The claim does not recite how information is formatted or what mandatory
field entries are required.
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Further supporting our determination that the claim does not integrate
the abstract idea into a practical application or improve a particular
technology, the claim broadly recites result-oriented steps, rather than any
particular manner in which a computer achieves the claimed results. For
example, the claim recites a "server configured to ... vi) prevent the
landlord from viewing the financial information ... until receiving the
landlord's acceptance of the terms of the real estate commission agreement."
That limitation does not describe how the computing component actually
operates to prevent landlord viewing or to receive landlord acceptance and
instead only recites the result-oriented operation. The remaining limitations
are similarly broadly drafted in a result-oriented manner devoid of any
description of how the result is achieved by the computing components. The
broadly-recited limitations here merely "configure[]" a computer to provide
an end result and effectively "simply stat[e] the [abstract idea] while adding
the words 'apply it,"' disfavoring patent-eligibility. Alice, 573 U.S. at 221
(quoting Mayo, 566 U.S. at 72).
In view of Appellant's Specification, and consistent with the
Examiner's determinations, claim 1 is not directed to a specific asserted
improvement in computer technological implementation or otherwise
integrated into a practical application and, thus, is directed to a judicial
exception.
STEP 2B
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
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providing an inventive concept. Alice, 573 U.S. at 221 (quoting Mayo, 566
U.S. at 72-73).
The Examiner determines "the structural elements" recited in the
claim, "e.g., tenant and landlord workstations, a server, memory storage, a
machine-readable medium), when taken in combination with the functional
elements of transmitting and receiving potential commercial lease
information, together do not offer 'significantly more' than the abstract idea
itself." Non-Final Act. 4--5; Ans. 6-7, 9. In particular, the Examiner
determines that the claim recites "a generic computer to perform generic
computer functions that are well understood, routine and conventional
activities previously known to the industry." Non-Final Act. 5; Ans. 7, 9.
Appellant first argues the "claim[] include[ s] specific limitations other
than what is well-understood, routine, and conventional in the field, and
include[ s] unconventional steps that confine the claim to a particular useful
application," e.g., "it is unconventional to require agreement to a
commission agreement and answers to all building questions and lease terms
before a server enables a landlord to submit lease terms to a prospective
tenant." App. Br. 20-21. Appellant secondly argues "collectively, the
claimed elements achieve significantly more than the alleged abstract idea of
gathering information about potential leases and managing relationships or
transactions between people" because the claim "impose[ s] a forced
workflow to ensure that specific data is exchanged in a particular order to
ensure an efficient and effective process." App. Br. 22. Appellant thirdly
argues the claimed "customized progress bar for each of the tenant and
landlord to indicate the particular order of stages as well as the current stage
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within such a forced workflow is not a well-understood, routine, and
conventional in the field." App. Br. 24.
We are not persuaded by Appellant's arguments because those
arguments are based on the abstract idea being "unconventional."
Specifically, Appellant's first two arguments are based on the order of the
lease negotiation process steps, i.e., "a forced workflow" that "require[ s]
agreement to a commission agreement and answers to all building questions
and lease terms before ... enabl[ing] a landlord to submit lease terms."
App. Br. 20-21. However, the order of lease negotiation steps in a lease
negotiating process is a certain method of organizing human activities,
namely managing interactions between people, which is an abstract idea, as
discussed above. Appellant's third argument, discussing the display of "a
tenant progress bar" and "a landlord progress bar" at limitation xv) (App.
Br. 23-24), also addresses limitations that are part of the lease negotiation
process, as discussed above. In particular, the claimed progress bars provide
the status of the lease negotiations. Because the features cited by Appellant
relate to the management of interactions between people in the lease
negotiation process itself and are thus directed to an abstract idea, those
features do not constitute the "inventive concept" and do not persuade us the
claim recites significantly more than the abstract idea itself. See BSG Tech
LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290-91 (Fed. Cir. 2018) ("Our
precedent has consistently employed this same approach. If a claim's only
'inventive concept' is the application of an abstract idea using conventional
and well-understood techniques, the claim has not been transformed into a
patent-eligible application of an abstract idea.").
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Further, considering the steps, alone and as an ordered combination,
that the claimed computing elements are "configured to" perform, e.g.,
receiving information, permitting input, accepting input, and displaying
information, we agree with the Examiner's finding that those steps and their
ordering are well-understood, routine, and conventional computing functions
(see Ans. 15) which are performed by "general purpose computing
equipment" (Non-Final Act. 5 (citing Spec. ,r 29)). The Specification's
description of the servers and workstations that carry out the claimed
invention describe computers with general-purpose, generic components,
e.g., the "server preferably includes four processors, three hard drives
configured for RAID 5, a tape backup unit and a file storage module. The
server also features multiple connections to the Internet and redundant
power sources." Spec. ,r 29; see id. Fig. 1. When we consider the claimed
functions of those generic computing components, separately and as an
ordered combination, we determine those computer functions are generic,
routine, and conventional computer activities that are performed only for
their conventional uses in an ordinary manner. See Elec. Power Grp. v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) ("The focus of the
asserted claims ... is on collecting information, analyzing it, and displaying
certain results of the collection and analysis."); see also In re Katz
Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed.
Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming."); see also
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
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access, and receiving payment recited an abstraction). As to Appellant's
specific discussion of the "progress bars" displaying the progress of the lease
negotiations (App. Br. 23-24), generally, the "collection, organization, and
display of two sets of information on a generic display device is abstract
absent a specific improvement to the way computers [ or other technologies]
operate." Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1345 (Fed.
Cir. 2018) (internal quotation and citation omitted; alteration in original).
Thus, we conclude that claim 1 does not provide an inventive concept
because the additional elements recited in claim 1 do not provide
significantly more than the recited judicial exception. Accordingly, claim 1
does not recite patent-eligible subject matter. Because claim 1 is
representative of the independent claims (see App. Br. 12-24), we also
conclude that independent claims 12 and 32 do not recite patent-eligible
subject matter. Further, Appellant has not proffered sufficient evidence or
argument to persuade us that any of the limitations in dependent claims 3, 5,
8, 9, 11, 13, 14, 16, 19-21, 23-28, 34, 40-44, and 47 provide a meaningful
limitation that transforms the claims into a patent eligible application. See
id. at 12-25. Therefore, we sustain the rejection of claims 1, 3, 5, 8, 9, 11-
14, 16, 19-21, 23-28, 32, 34, 40-44, and 47 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
35 U.S.C. § 101: Claims 37-39
Appellant contends dependent claims 37-39 recite patent-eligible
subject matter. App. Br. 25. Appellant argues claims 37-39 as a group,
specifically addressing the limitations recited in claim 37. Id. We select
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claim 37 as representative of Appellant's arguments for claims 37-39. See
37 C.F.R. § 4I.37(c)(1)(iv)(2016).
Claim 3 7 recites "wherein the software is further configured to
automatically generate a financial summary report including itemized cost
projections based on the proposed lease terms received from the landlord."
Appellant argues the "automatic generation relies on complete and
accurate data, which is collected via the forced workflow, and results in
generation of a final report without the use of a separate financial analysis
tool in which a user enters proposed lease terms to perform financial
analysis," and, thus, "the forced workflow capturing requisite data provides
an additional technological advantage in that additional delays and computer
resource use are avoided." App. Br. 25.
That argument, however, describes an advantage in the lease
negotiation process, not a technological advantage to a computing system.
Appellant points out that the "generation of [the] final report" is done
"without the use of a separate financial analysis tool in which a user enters
proposed lease terms to perform financial analysis." Id. But the advantage
described is that the user does not have to perform an additional step, rather
than an advantage or improvement in how the computer functions. As such,
we are not persuaded claims 37-39 recite patent-eligible subject matter.
Therefore, we sustain the rejection of claims 37-39 under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter.
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35 U.S.C. § 101: Claims 45 and 46
Appellant contends dependent claims 45 and 46 recite patent-eligible
subject matter. App. Br. 25-26. Appellant presents similar arguments for
dependent claims 45 and 46. See id.
Claim 45 recites "displaying, simultaneously with the tenant progress
bar, a commission terms input interface on the tenant workstation enabling a
tenant to enter commission terms." Appellant argues "[s]imultaneously
displaying a tenant progress bar indicating a current stage within the forced
workflow along with a commission terms input interface is an
unconventional step that goes beyond well-understood, routine, and
conventional aspects in the field." Id. at 25. Appellant argues that "the
claims are specifying a particular display screen having particular
components providing technical advantages not found in standard computer-
based leasing systems." Id. at 26.
The claims, however, broadly recite the production of a desired result,
i.e., a simultaneous display, and do not include any limitations that limit how
the simultaneous display is implemented, much less that the simultaneous
display of information is implemented in some non-routine or
unconventional manner. The claims do not recite any particular
improvement to the computer but, at most, provide more information to the
users. See Interval Licensing, 896 F.3d at 1345 (stating that the "collection,
organization, and display of two sets of information on a generic display
device is abstract absent a specific improvement to the way computers [ or
other technologies] operate") (internal quotation and citation omitted;
alteration in original). As such, Appellant's arguments highlighting the
simultaneous display of different types of information, i.e., a progress bar,
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an input interface, and the types of inputs for the interface (App. Br. 25-26),
do not persuade us that claims 45 and 46 recite patent-eligible subject
matter. Therefore, we sustain the rejection of claims 45 and 46 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter.
35 U.S.C. §103: Claims l, 3, 5, 8, 9, 11-14, 16, 19-21,
23-28. 32. 34 and 3 7~5 and 47
''prevent the landlord ... until"
Appellant contends the Examiner erred in finding Donahue teaches
"vi) prevent[ing] the landlord from viewing the financial information ...
until receiving the landlord's acceptance of the terms," "x) prevent[ing] the
landlord from submitting proposed lease terms ... until receiving answers,"
and "xi) prevent[ing] the landlord from submitting the proposed lease
terms ... until receiving proposed lease terms," as recited in claim 1 and
similarly recited in claims 12 and 32. App. Br. 27-29; Reply Br. 5---6.
Specifically, Appellant argues "Donahue fails to teach and, rather, teaches
away from complete submissions and a forced workflow," i.e., preventing
the landlord from advancing in the claimed process until a prerequisite step
is completed, because, in Donahue, "parties may agree or defer to advance"
through lease negotiation steps. App. Br. 27-28; Reply Br. 5.
We are not persuaded. The Examiner finds (Non-Final Act. 11-12;
Ans. 17-18), and we agree, that Donahue's system in which "parties are
prevented from advancing to the next negotiation phase unless the computer
detects that each user has either agreed to a specific lease term" (Donahue
,r 66; see Donahue ,r 119) teaches "prevent[ing] the landlord" from
advancing in lease negotiations until earlier conditions are satisfied.
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Appellant's argument is not persuasive because it does not address the
features of Donahue on which the Examiner relies. Donahue describes that
"parties are prevented from advancing to the next negotiation phase unless
the computer detects that each user has either agreed to a specific lease term,
or that each user has elected to defer agreement on a term until a later
negotiation phase," i.e., alternative cases in its negotiation process. Id. ,r 66
( emphasis added). Appellant addresses the case in Donahue in which parties
have "elected to defer agreement on a term until a later negotiation phase."
See Reply Br. 5; see also App. Br. 28. But Appellant does not address the
other case in which parties have not elected to defer agreement on the term
and "are prevented from advancing to the next negotiation phase unless the
computer detects that each user has ... agreed to a specific lease term"
(Donahue ,r 66). Whether or not Donahue labels those alternative cases as
separate embodiments (Reply Br. 5; App. Br. 28), Donahue explains that
parties may only skip a negotiation step if the parties agree to skip the step.
It follows that when the parties do not agree to skip the negotiation step, the
parties are prevented from advancing to the next step and must first
complete the prerequisite step. Furthermore, because Donahue specifically
describes a process preventing skipping negotiation steps, Donahue does not
teach away from preventing skipping negotiation steps.
Accordingly, we are not persuaded the Examiner erred in finding
Donahue teaches "vi) prevent[ing] the landlord from viewing the financial
information ... until receiving the landlord's acceptance of the terms," "x)
prevent[ing] the landlord from submitting proposed lease terms ... until
receiving answers," and "xi) prevent[ing] the landlord from submitting the
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proposed lease terms ... until receiving proposed lease terms," as recited in
claim 1 and similarly recited in claims 12 and 32.
"after receiving acceptance ... permit the landlord to view"
Appellant contends the Examiner erred in finding the combination of
Amend, Donahue, Heartland, and Susser teaches first "i) receiv[ing] tenant
information ... including financial information," then "vi) prevent[ing] the
landlord from viewing the financial information ... until receiving the
landlord's acceptance of the terms of [a] real estate commission agreement
between the tenant and the landlord," and then "vii) after receiving
acceptance of the terms of the real estate commission agreement ...
permit[ting] the landlord to view the financial information," as recited in
claim 1 and similarly recited in claims 12 and 32. App. Br. 30-32.
Specifically, Appellant argues the combination "do[es] not suggest
interweaving the steps" of "i) a server receiving the tenant's financial
information first, ii) the server preventing viewing of this received financial
information, iii) receiving acceptance of terms of the commission agreement
from the landlord, and iv) then permitting viewing of the received financial
information after acceptance." Id. at 31-32.
We are not persuaded. The Examiner relies on (Non-Final Act. 6-7)
Amend's online real estate leasing system in which a "would-be tenant 115
prepares [a project requirements specification (PRS)]" to teach "receiv[ing]
tenant information" (Amend ,r,r 57-58). The Examiner further relies on
(Non-Final Act. 17-18) Jacobson's "credit reports module for accessing
credit report information of individuals" to teach "tenant information ...
including financial information" (Jacobson ,r 10; see id. ,r,r 429--486). As
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discussed above, the Examiner also relies on (Non-Final Act. 11-12;
Ans. 17-18) Donahue's description of parties "progress[ing] sequentially
through [leasing] phases, and that users will be prevented from jumping
ahead to later phases until agreement has been reached on lease provisions in
each phase" (Donahue ,r 119; see Donahue ,r 66). The Examiner
additionally relies on Heartland to describe a process of "enter[ ing] into [ real
estate] commission agreements before negotiating lease terms." Ans. 19
(citing Heartland at 1); Non-Final Act. 15-16. The Examiner concludes that
it would have been obvious to one of ordinary skill in the art at
the time of the invention to substitute the feature of a commission
agreement ( as disclosed by [Heartland]) for the feature of any of
the lease negotiation phases in the method that requires
agreement in that lease phase before allowing the parties to
proceed to the next lease phase ( as disclosed by Donahue), such
as viewing financial information of the tenant.
Ans. 20; see also Non-Final Act. 16-17.
Appellant's argument that the prior art "do[es] not suggest
interweaving the steps to exchange financial information and to agree to a
commission agreement" in the order claimed (App. Br. 31-32) does not
persuade us that the Examiner erred in concluding that it would have been
obvious to do so. Heartland describes that completing a real estate
commission agreement is one of the initial steps in a lease negotiation
(Heartland 1 ), and Donahue teaches that lease negotiations should be forced
to progress in a sequential manner (Donahue ,r 119; see Donahue ,r 66). For
the reasons explained below, we are not persuaded of error in the
Examiner's rationale to combine the cited references. As such, we agree
with the Examiner's conclusion (Ans. 20) that it would have been obvious to
prevent the landlord from progressing through lease negotiations to view
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tenant financial information (as taught by Amend and Jacobson) until the
landlord has completed a real estate commission agreement.
Accordingly, we are not persuaded the Examiner erred in concluding
the combination of Amend, Donahue, Heartland, and Jacobson teaches or
renders obvious first "i) receiv[ing] tenant information ... including
financial information," then "vi) prevent[ing] the landlord from viewing the
financial information ... until receiving the landlord's acceptance of the
terms of [a] real estate commission agreement between the tenant and the
landlord," and then "vii) after receiving acceptance of the terms of the real
estate commission agreement ... permit[ting] the landlord to view the
financial information," as recited in claim 1 and similarly recited in claims
12 and 32.
Improper Combination
Appellant contends the Examiner improperly combined Amend,
Donahue, and Heartland. App. Br. 32-35. Specifically, Appellant argues
"[ e Jach of the particular rationales offered by the Examiner for inserting a
commission agreement phase into Amend and Donahue are improper." Id.
at 33.
We are not persuaded. The Examiner determines "that one of
ordinary skill in the art could have combined, as an additional phase of
negotiation (i.e., the commission agreement), acceptance of the commission
agreement as a first step before any other phase in Donahue's forced
workflow." Ans. 26-27. The Examiner further determines that
[ o ]ne of ordinary skill in the art would have been motivated to
incorporate the feature of preventing a step in the lease
negotiation from occurring until agreement on a specific
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provision has been reached because when "both parties are
forced to conform to a highly structured, well-defined
transaction sequence for negotiation, errors and
misunderstandings can be reduced."
Non-Final Act. 12 ( citing Donahue ,r 65). The Examiner also determines
that "one of ordinary skill in the art would have been motivated to
incorporate the feature because such an incorporation would prevent parties
from 'backtracking' to items 'that were previously the subject of
agreement."' Non-Final Act. 12 (citing Donahue ,r 100).
Appellant's argument that the "benefits of Donahue's structured
negotiation system" do not "provide[] a motivation to add a particular phase,
such as execution of a commission agreement, into the structured negotiation
system" (App. Br. 33-34) is not persuasive because it does not address the
Examiner's rationale for combining prior art elements according to known
methods to yield predictable results (Ans. 26-27). As discussed above, the
Examiner finds that Heartland teaches acceptance of a real estate
commission agreement as one of the initial steps in a real estate lease
negotiation. The Examiner's reasoning for adding Heartland's real estate
commission agreement in the combination, i.e., combining known prior art
elements (id.), is supported by rational underpinning. Heartland describes
that having an agreed-to real estate commission agreement is useful in a real
estate lease negotiation (Heartland at 1 ), and Appellant does not dispute the
Examiner's finding that "most states require commission agreements to be in
writing" (Non-Final Act. 16; see App. Br. 34). As such, we find an
ordinarily skilled artisan would have been motivated to include that
particular lease feature in lease negotiations. Appellant's arguments do not
persuasively address that rationale (see App. Br. 32-35), and, accordingly,
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we are not persuaded the Examiner's rationale for adding the execution of a
commission agreement into a structured lease negotiation is improper.
We further note that the Examiner's additional rationales for the
combination (Non-Final Act. 12, 16) are also supported by rational
underpinning based on the references themselves. In particular, Donahue
describes "forc[ing] [parties] to conform to a highly structured, well-defined
transaction sequence for negotiation" in order to reduce "errors and
misunderstandings." Donahue ,r 65.
Accordingly, we are not persuaded the Examiner improperly
combined Amend, Donahue, and Heartland.
Therefore, we sustain the rejection of claims 1, 12, and 32 under 35
U.S.C. § 103(a) as being unpatentable over Amend, Donahue, and
Heartland. Appellant does not argue separate patentability for dependent
claims 3, 5, 8, 9, 11, 13, 14, 16, 19-21, 23-28, 34 and 37--45 and 47, which
depend directly or indirectly from claims 1, 12, and 32. See App. Br. 36.
Accordingly, for the reasons set forth above, we sustain the Examiner's
decision to reject claims 1, 3, 5, 8, 9, 11-14, 16, 19-21, 23-28, 32, 34 and
37--45 and 47.
35 U.S. C. § 103: Claim 46
Appellant contends the Examiner erred in finding Donahue teaches
"displaying, simultaneously with the tenant progress bar, a lease terms input
interface on the tenant workstation ... enabling entry of the plurality of
requested lease terms," as recited in claim 46. App. Br. 36-37. Specifically,
Appellant argues "FIG. 12 of Donahue and paragraph 118 illustrate and
describe an interface that simply lists hyperlinks to various phases of the
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disclosed process, without indicating progress along those phases or
simultaneously illustrating a lease terms input interface." Id. at 3 7.
We are not persuaded. The Examiner finds, and we agree, that Figure
13 of Donahue, showing a lease negotiation in "Phase I," teaches "a tenant
progress bar." Ans. 27; see Non-Final Act. 26; see also Donahue Figs. 13A,
14, 15. We also agree with the Examiner's finding that Figure 13 of
Donahue further shows an interface for "the input of lease terms, such as
required space, delivery date, rent per month, and term of lease ( see features
1301, 1302, 1303, and 1304)" and, therefore, teaches a simultaneously
displayed "lease terms input interface on the tenant workstation." Ans. 27;
see Non-Final Act. 26; see also Donahue Figs. 13A, 14, 15.
Appellant's arguments address Figure 12 of Donahue but do not
address the Examiner's findings regarding Figure 13 (or Figures 13A, 14,
and 15, also relied-upon by the Examiner). Accordingly, we are not
persuaded the Examiner erred in finding Donahue teaches "displaying,
simultaneously with the tenant progress bar, a lease terms input interface on
the tenant workstation ... enabling entry of the plurality of requested lease
terms," as recited in claim 46, and we sustain the Examiner's decision to
reject claim 46.
DECISION
We affirm the Examiner's decision rejecting claims 1, 3, 5, 8, 9, 11-
14, 16, 19-21, 23-28, 32, 34, and 37--47 under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter.
We affirm the Examiner's decision rejecting claims 1, 3, 5, 8, 9, 11-
14, 16, 19-21, 23, 26-28, 32, 34, and 43--47 under 35 U.S.C. § 103(a) as
being unpatentable over Amend, Donahue, Heartland, and Jacobson.
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We affirm the Examiner's decision rejecting claims 24, 25, and 37--42
under 35 U.S.C. § 103(a) as being unpatentable over Amend, Donahue,
Heartland, Jacobson, and Florance.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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