Ex Parte Wiese

Patent Trial and Appeal Board

Sep 17, 2018

13152024 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/152,024 06/02/2011
26096 7590 09/19/2018
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
FIRST NAMED INVENTOR
Steven Paul Wiese
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.
60365-00SPUS 1 6033
EXAMINER
WHITAKER, ANDREW B
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/19/2018 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):
ptodocket@cgolaw.com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN PAUL WIESE
Appeal2017-004149
Application 13/152,024
Technology Center 3600
Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
BRUCE T. WIEDER, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant 1 seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 1-19 and 21, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
1 Appellant is the real party in interest. App. Br. 1.
Appeal2017-004149
Application 13/152,024
THE INVENTION
The Appellant's claimed invention is directed to a real estate tracking
system (Spec. para. 2). Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. A method of monitoring traffic at a location of a real
property for sale:
a) identifying a mobile device of a potential interested
visitor of a real property;
b) determining a location of the mobile device relative to
the real property, while the mobile device is in a vehicle;
c) monitoring with a computer visits of the potential
interested visitor to the real property via step b );
d) storing with the computer the visits monitored in step
c); and
e) the computer providing a report of the visits monitored
in step c ).
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1-19 and 21 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 1-7 and 9-21 are rejected under 35 U.S.C. § I03(a)
under Marino (US 2008/0281829 Al, published Nov. 13, 2008) (hereinafter
"Marino") and Harris et al., (US 2006/0190285 Al, published Aug. 24,
2006) (hereinafter "Harris").
3. Claim 8 is rejected under 35 U.S.C. § I03(a) as unpatentable
over Marino, Harris, and Chan et al., (US 2002/0068585 Al, published June
6, 2002) (hereinafter "Chan").
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Application 13/152,024
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 2
ANALYSIS
Rejection under 35 USC§ 101
The Appellant argues that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea, and that the claim is also
"significantly more" than the alleged abstract idea (App. Br. 3, 4; Reply Br.
1-3).
In contrast, the Examiner has determined that the rejection is proper
(Final Act. 2, 3; Ans. 2---6).
We agree with the Examiner. Under 35 U.S.C. § 101, an invention is
patent-eligible if it claims a "new and useful process, machine, manufacture,
or composition of matter." 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: "[l]aws of
nature, natural phenomena, and abstract ideas" are not patentable. See, e.g.,
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-79 (2012)).
In accordance with that framework, we first determine whether the claim is
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 13/152,024
"directed to" a patent-ineligible abstract idea. If so, we then consider the
elements of the 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 of the abstract idea. Id. This is a
search for an "inventive concept," an element or combination of elements
sufficient to ensure that the claim amounts to "significantly more" than the
abstract idea itself. Id. The Court also stated that "the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention." Id. at 2358.
Here, we determine that the claim is directed to the concept of
monitoring the visits of a real estate visitor to a property. See preamble of
claim 1 ("monitoring traffic at a location of a real property for sale"); Spec.
,r 3 ("tracking and monitoring visits to real property that is for sale"). This is
a method of organizing human activities or a fundamental economic practice
long prevalent in our system of commerce, and is an abstract idea beyond
the scope of§ 101. Here, as the Examiner notes, the claimed method
collects real estate visitor information, stores the information, and displays
certain results from the information. Ans. 2 ("The advance [the instant
claims] purport to make is a process of gathering and analyzing information
of a specified content, then displaying the results .... "). In Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) collecting
information, analyzing it, and displaying results from certain results of the
collection and analysis was held to be an abstract idea.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
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Application 13/152,024
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not.
Considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function. Final Rej. 2-3;
Ans. 2--4. The Specification at paragraph 10 describes using conventional
computer components such as a smart phone, GPS receiver, internet, and
cell towers in a conventional manner.
The Appellant in the Reply Brief at pages 1 and 2 cites to McRO, Inc.
v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), but the
claims in that case dealt with different subject matter in rules specific to
technology for lip sync and facial expression animation than those that are
presented here, which are related to collecting, storing, and displaying
information, which happens to be in real estate.
We note the point about pre-emption (Reply Br. 2). While pre-
emption "'might tend to impede innovation more than it would tend to
promote it,' thereby thwarting the primary object of the patent laws' (Alice,
134 S. Ct. at 2354 (quoting Mayo, 566 U.S. at 71)), "the absence of
complete preemption does not demonstrate patent eligibility" (Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)).
See also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63
(Fed. Cir. 2015) ("[T]hat the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract.").
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Application 13/152,024
For these above reasons the rejection of claim 1 is sustained. A
review of dependent claims 2-14 has determined that they are drawn to
similar subject matter in scope, and the rejection of these claims is sustained
as well. For specific assertions made by Appellant with respect to claims 5
and 8, we are in agreement with the Examiner. Ans. 4--5. Claim 21 is
directed to similar subject matter and the rejection of this claim is sustained
as well for the same reasons.
We reach the same conclusion as to independent system claim 15 and
its dependent claims which are all directed to similar subject matter as well.
Here, as in Alice, "the system claims are no different in substance from the
method claims. The method claims recite the abstract idea implemented on
a generic computer; the system claims recite a handful of generic computer
components configured to implement the same idea." Alice, 134 S. Ct. at
2351. "[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention. Stating an
abstract idea 'while adding the words 'apply it' is not enough for patent
eligibility."' Id. at 2358 (quoting Mayo, 566 U.S. at 72). For specific
assertions made by Appellant with respect to claims 15-1 7, we are in
agreement with the Examiner. Ans. 5---6.
Rejection under 35 USC§ 103(a)
The Appellant argues that the rejection of claim 1 is improper because
there is no rationale for the combination (App. Br. 6, 7). Specifically, the
Appellant argues that Marino only wants to connect to people who have
passed through the open house while the claims reference the mobile device
in the vehicle (App. Br. 6).
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Application 13/152,024
We agree with the Appellant. Here, the claims include a limitation
requiring "determining a location of the mobile device relative to the real
property, while the mobile device is in a vehicle." When considered in
combination with the other claimed elements, we agree with the Appellant
that the rationale provided by the Examiner for the combination fails to
provide articulated reasoning with rational underpinnings without the
impermissible use of hindsight. For this reason, the rejection of claim 1 and
its dependent claims is not sustained. The remaining claims include a
similar limitation and the rejection of these claims is not sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1-19 and 21 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1-7 and 9-21 under 35 U.S.C. § 103(a) under Marino and
Harris.
We conclude that Appellant has shown that the Examiner erred in
rejecting claim 8 under 35 U.S.C. § 103(a) as unpatentable over Marino,
Harris, and Chan.
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DECISION
The Examiner's rejection of claims 1-19 and 21 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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