Ex Parte Wilson et al

Patent Trial and Appeal Board

Oct 24, 2017

13027127 (P.T.A.B. Oct. 24, 2017)

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.
13/027,127 02/14/2011 James Wilson 06998-P0005B 6202
24126 7590 10/26/2017
ST. ONGE STEWARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
EXAMINER
LINDSEY III, JOHNATHAN J
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
10/26/2017 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):
patentpto@ ssjr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES WILSON, JEFFREY MCNEILL, MICHAEL DAVIS,
MARK SILVA, and GENEVIEVE C. COMBES1
Appeal 2016-004335
Application 13/027,127
Technology Center 3600
Before JASON V. MORGAN, JOSEPH P. LENTIVECH, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 10, 11, 13, 14, 21, 23, 24, 26, and 27, which are all of the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify ZipRealty LLC as the real party in interest. App. Br. 2.
Appeal 2016-004335
Application 13/027,127
Introduction
Appellants describe the invention as relating “to methods and systems
for transmitting automated alerts related to property locations during an
agent’s visit to such locations.” Spec. 13. Appellants describe features of
an embodiment of the invention as follows.
[T]he agent is relieved of the hassle of having to identify
specific clients who may be interested in a property that the
agent is currently viewing. The agent simply has to activate the
location alert feature, and the real estate service automatically
captures information about the current location, identifies
potential clients that may be interested in the current location,
and blasts out personalized alerts with information that the
clients would not otherwise be able to access.
Id. 111.
Claim 10 is illustrative of the pending claims:
10. A method of communicating information about a
real estate property by a real estate agent to potential
purchasers, the method comprising:
detecting a current location of the real estate agent using
geo-location capabilities within a mobile device carried by the
real estate agent;
prompting the real estate agent to record, via the mobile
device, multimedia information associated with the real estate
agent’s visit to a specific MLS-listed property corresponding to
the detected geographic location of the real estate agent;
receiving, by a computer system of a real estate service,
the multimedia information associated with the specific MLS-
listed property recorded via the mobile device;
retrieving, from a database in communication with the
computer system of the real estate service, a list of clients of the
real estate agent;
identifying, from the list of clients of the real estate
agent, a prospective real estate buyer with potential interest in
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purchasing the specific MLS-listed property based on
preference information identified from a prior search history of
the prospective real estate buyer; and
causing, by the computer system of the real estate
service, an alert to be transmitted to the prospective real estate
buyer based on the prospective real estate buyer being
identified as having potential interest in purchasing the specific
MLS-listed property, the alert including the multimedia
information associated with the real estate agent's visit to the
specific MLS-listed property.
App. Br. 42 (Claims App’x).
Rejections and Prior Art References
Claims 10, 11, 13, 14, 21, 23, 24, 26, and 27 stand rejected under 35
U.S.C. § 101 as directed to ineligible subject matter. Final Act. 2—3; see
also Ans. 2—6 (issuing new grounds of rejection under 35 U.S.C. § 101 for
these claims).
Claims 10, 11, 13, 14, 21, 23, 24, 26, and 27 stand rejected under 35
U.S.C. § 103(a) as unpatentable over by Wilson (US 2011/0275441 Al;
Nov. 10, 2011), Craig et al. (US 2010/0217686 Al; Aug. 12, 2010), Otto et
al. (US 2007/0255581 Al; Nov. 1, 2007), and Skillen et al. (US 7,469,245
B2; Dec. 23, 2008). Final Act. 4-15.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions of reversible error. We disagree with Appellants’ conclusions.
Instead, we adopt the Examiner’s findings and reasons: (a) for the 35 U.S.C.
§101 rejection, as set forth in the Answer; and (b) for the 35 U.S.C. § 103(a)
rejection, as set forth in the Final Rejection and as set forth in the Answer.
We highlight the following for emphasis.
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The 35 U.S.C. §101 Rejection
“Issues of patent-eligible subject matter are questions of law and are
reviewed without deference.” CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1369 (Fed. Cir. 2011). To determine if a claim recites
patentable subject matter under 35 U.S.C. § 101, the Supreme Court has set
forth a two-part test. Alice Corp. v. CLS Bank Inti, 134 S. Ct. 2347, 2355
(2014).
1. Step One of the Alice Analysis
“First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice, 134 S. Ct. at 2355. A court must be cognizant that
“all inventions at some level embody, use, reflect, rest upon, or apply laws
of nature, natural phenomena, or abstract ideas” {Mayo Collaborative Servs.
v. Prometheus Lab., Inc., 566 U.S. 66, 71 (2012)), and “describing the
claims at... a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Instead, “the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter.” Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
The Examiner finds the claims “are directed to two abstract ideas” as
follows:
The “prompting the real estate agent tor record, via the mobile
device, multimedia information associated with the real estate
agent’s visit to a specific MLS-listed property . . .” step broadly
describes a method for organizing human activities. The courts
previously found certain concepts relating to managing human
behavior abstract. . . . The “identifying ... a prospective real
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estate buyer with a potential interest in purchasing the specific
MLS-listed property based on preference information . . and
“causing ... an alert to be transmitted to the prospective real
estate buyer . . . the alert including multimedia information ...”
steps could also be understood as describing a method for
comparing new and stored information and using rules to
identify options. These methods are also abstract ideas. . . .
Ans. 3 (internal ellipses in original, ending ellipsis added). The Examiner
similarly identifies abstract ideas to which dependent claims 11, 13, 23, 24,
26, and 27 are drawn. Id. at 5—6.
a) Prima Facie Case
Appellants argue the Examiner fails to establish a prima facie case for
unpatentability under § 101 because the identification of the allegedly
abstract idea of the independent claims is conclusory and unsupported.
Reply Br. 3—5, 17—18. We disagree. As the Federal Circuit has clarified,
“the prima facie case is merely a procedural device that enables
an appropriate shift of the burden of production.” Hyatt v.
Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). See also In re
Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The Patent and
Trademark Office (“PTO”) satisfies its initial burden of
production by “adequately explaining] the shortcomings it
perceives so that the applicant is properly notified and able to
respond.” Hyatt, 492 F.3d at 1370. In other words, the PTO
carries its procedural burden of establishing a prima facie case
when its rejection satisfies 35 U.S.C. § 132, in “notifying] the
applicant . . . [by] stating the reasons for [its] rejection, or
objection or requirement, together with such information and
references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” 35 U.S.C.
§ 132. That section “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection.” Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).
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In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (brackets in original).
Appellants contend the Examiner’s identification of two abstract ideas
to which the claims are directed lacks “evidentiary support or analysis” and
“thus fails to establish a prima facie case that the claims are directed to an
abstract idea.” Reply Br. 3. We disagree. The Examiner’s findings and
reasons in the new ground of rejection along with the discussion in the
Response to Argument section in the Answer (see Ans. 2—9 (inter alia,
comparing Appellants’ claims to guidance provided from prior judicial
precedent and published guidance from the USPTO on Subject Matter
Eligibility)), however, are not “so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for
rejection.” In re Jung, 637 F.3d at 1362.
Appellants also contend the Examiner fails to establish a prima facie
case by not providing required “authoritative documentation to support the
Examiner’s § 101 rejection.” Reply Br. 4 (referencing the Administrative
Procedure Act (APA), 5 U.S.C. § 500 et seq., In re Gartside, 203 F.3d 1305,
1315 (Fed. Cir. 2000), In re Dembiczak, 175 F.3d 994, 999-1000, 50
U.S.P.Q.2d 1614, 1617 (Fed. Cir. 1999), and. Donahue v. Barnhart, 279 F.3d
441, 446 (7th Cir. 2002)). We again disagree. The fact-finding is subject to
review for “substantial evidence,” not support by “authoritative
documentation.” See, e.g., in re Gartside, 203 F.3d at 1308. Further, we
note Examiners may rely on their own technical expertise, e.g., to describe
the knowledge and skills of a person of ordinary skill in the art. In re Berg,
320 F.3d 1310, 1315 (Fed. Cir. 2003) (Examiners are “persons of scientific
competence in the fields in which they work,” and their findings are
“informed by their scientific knowledge”); see also MPEP § 2141 (II)(C)
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(Resolving the Level of Ordinary Skill in the Art) and MPEP § 2144.03 (“an
examiner may . . . rely on ‘common knowledge’ in making a rejection”).
There is ample support for the Examiner’s findings and reasons in the new
ground of rejection.
Accordingly, we find the Examiner’s new ground of rejection
establishes a prima facie case of unpatentability under § 101 of claims 10,
11, 13, 14,21,23,24,26, and 27.
b) Whether the Claims are Directed to an Abstract Idea
Appellants argue the Examiner fails to comply with examination
guidelines, which instruct examiners “to ‘refer to the body of case law
precedent in order to identify abstract ideas by way of comparison to
concepts already found to be abstract’” (quoting the USPTO guideline
“July 2015 Update: Subject Matter Eligibility,” § III, 11). Reply Br. 5—6.
Appellants contend the Examiner provides “no comparison of these alleged
abstract ideas to any other concept, much less to any concept that the courts
have already found to be abstract.” Id. We disagree. The Examiner’s new
ground of rejection plainly compares the idea of managing human behavior
(identified for the claim requirements related to prompting of the agent) to In
re Meyer, 688 F.2d 789 (CCPA 1982) and the idea of comparing
information and using rules to identify options (identified for the claim
requirements related to identifying of a buyer and transmitting an alert) to
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 Fed. App’x 950
(Fed. Cir. 2014) (nonprecedential). See Ans. 3.
Appellants argue the Examiner’s identification of the abstract idea to
which claim 10 is drawn erroneously oversimplifies the claim, which
includes significant limitations the Examiner glosses over. Reply Br. 9—11.
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Appellants identify “detecting a current location,” “receiving . . . multimedia
information associated with the specific MLS-listed property,” and
“identifying, from the list of clients . . . based on preference information
identified from a prior search history” as recited limitations that are “not
simply directed to” the abstract ideas identified by the Examiner. Id. at 10—
11. This is unpersuasive.
We look to whether the claims focus on a specific means or method
that improves the relevant technology, or instead is directed to a result or
effect that itself is the abstract idea and merely invoke generic processes and
machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed.
Cir. 2016). As the Examiner finds in the new ground of rejection, and we
agree, the limitations to which Appellants point are conventional functions
of receiving data (e.g., receiving “current location” using “geo-location
capabilities”) and processing data (e.g., processing a “list of clients” based
on “search history”), claimed in a manner that uses general, conventional
technology. Ans. 4. While it is possible that such limitations, alone or as an
ordered combination, may amount to “something more” under the second
prong of the Alice analysis, such recitations do not result in the claim being
“drawn to” something other than the abstract ideas identified by the
Examiner.
Claim 10 is unlike the claims at issue in Enfish, which provided a
unique software database table structure that improved existing software
database technology and, thus, were “directed to a specific implementation
of a solution to a problem in the software arts,” and not unpatentably
directed to an abstract idea. 822 F.3d at 1339. Claim 10 does not recite any
unique software technology, instead it recites generic underlying technology.
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Claim 10 is also unlike the claims in DDR Holdings v. Hotels.com
L.P., 773 F.3d 1245 (Fed. Cir. 2014), in which the Federal Circuit found the
claims at issue were “necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks”
because they addressed a technical issue unique to Internet website
problems. 773 F.3d at 1257. Here, claim 10 uses conventional technologies
to address issues of communication between real estate agents and clients or
potential purchasers, without solving any underlying technological issues.
Thus, we agree with the Examiner that claim 10 is directed to an
abstract idea under the first prong of Alice.
2. Step Two of the Alice Analysis
In the second step, we consider the claim elements “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, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78). The
Supreme Court has “described step two of this analysis as a search for an
‘inventive concept’—i.e., 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.” Id. (quotation omitted).
Appellants argue the claim 10
limitations recite a specific way for identifying recipients for
electronically transmitted information (e.g., “based on
preference information identified from a prior search history of
the [recipient]”) that addresses an Internet-centric challenge
related to dissemination of pertinent information. Further, the
specific way for identifying recipients for electronically
transmitted information is necessarily rooted in computer
technology because, as recited by claim 10, a “prospective real
estate buyer” is identified “based on preference information
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identified from a prior search history of the prospective real
estate buyer.”
Reply Br. 15 (brackets in original).
This argument is unpersuasive. The Federal Circuit cautioned in DDR
Holdings “that not all claims purporting to address Internet-centric
challenges are eligible for patent.” 773F.3datl258. Claim 10 is unlike the
claims at issue in DDR Holdings, which addressed a challenge that pertained
only to the realm of the Internet, with no real-world analog. Here, the
requirement for “identifying, from the list of clients of the real estate agent, a
prospective buyer with potential interest in purchasing the specific MLS-
listed property based on preference information, from a search history of the
prospective real estate buyer” is analogous to the real-world practice of real
estate agents who, when a certain type of property comes on the market,
such as lakefront property, identify and contact their clients who previously
expressed interest in and/or asked the agent to notify them about such
properties when they become available. See Enflsh, 822 F.3d at 1336
(identifying issue as whether the “focus of the claims is on an improvement
to computer functionality itself, not on economic or other tasks for which a
computer is used in its ordinary capacity”); compare DDR Holdings, 773
F.3d at 1257 (“these claims stand apart because they do not merely recite the
performance of some business practice known from the pre-Internet world
along with the requirement to perform it on the Internet”).
Appellants also argue that “[t]he specific way for verifying the
physical presence of the real estate agent is necessarily rooted in computer
technology because, as recited by claim 10, the ‘current location of the real
estate agent’ is detected ‘using geolocation capabilities within a mobile
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device carried by the real estate agent’” and “claim 10 results in the
transmission of information that is unconventionally confined to a select
group of interested recipients, and in doing so, the application of claim 10
results in a reduction in use of both computational and network resources as
compared with conventional practice.” Reply Br. 16. These requirements to
which Appellants point, however, are routine applications of well-known
technology to the abstract ideas to which claim 10’s “method of
communicating information about a real estate property by a real estate
agent to potential purchasers” is directed. By itself, application of well-
known technology to automate a business method does not “‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 78).
Thus, we agree with the Examiner’s determination that the steps of
claim 10, both individually or as an ordered combination, do not recite
“significantly more” than routine use of well-known technologies to
automate a business method of a real estate agent that otherwise is directed
to unpatentably abstract ideas. Accordingly, we sustain the § 101 rejection
of claim 10, and also of claims 11, 13, 14, 21, 23, 24, 26, and 27, which
Appellants do not separately argue.
The 35 U.S.C. § 103(a) Rejection
Appellants argue the Examiner errs in the rejection of claim 10:
(1) in finding the cited art teaches or suggests “identifying, from
the list of clients of the real estate agent, a prospective real
estate buyer with potential interest in purchasing the specific
MLS-listed property based on preference information
identified from a prior search history of the prospective real
estate buyer,” as recited;
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(2) in finding the cited art teaches or suggests “causing ... an
alert to be transmitted to the prospective real estate buyer
based on the prospective real estate buyer being identified as
having potential interest in purchasing the specific MLS-
listed property, the alert including the multimedia
information associated with the real estate agent's visit to the
specific MLS-listed property,” as recited; and
(3) in finding one of ordinary skill would have been motivated
to combine Otto with Wilson and Craig.
App. Br. 30-40.
1. “Identifying... a Prospective Real Estate Buyer ...”
a) “From the List of Clients of the Real Estate Agent ”
In rejecting claim 10, the Examiner finds Otto teaches “identifying,
from the list of clients of the real estate agent, a prospective real estate buyer
with potential interest in purchasing the specific MLS-listed property based
on preference information,” as recited. Final Act. 5—6 (citing Otto 35—40,
Figs. 3A—B, 6, 9). Appellants argue that the Examiner errs because “the
‘buyer profiles’ stored in the ‘buyer database’ of Otto are simply ‘buyers
participating in the online real property marketplace’ of Otto, and these
buyers are not described by Otto as being ‘clients of a real estate agent.’”
App. Br. 32 (citing Otto 129). Appellants contend that because “it is an
objective of Otto to eliminate real estate agents from real estate transactions
all together,” , the Examiner errs in finding Otto teaches “the list of clients
of the real estate agent,” as recited. Id.
This is unpersuasive. Each reference cited by the Examiner must be
read, not in isolation, but for what it fairly teaches in combination with the
prior art as a whole. See In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). The relevant inquiry is whether the claimed subject matter
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would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Claim 10 does not recite “identifying, from a list of clients of the real
estate agent,” as Appellants argue (App. Br. 32), rather it recites “identifying
. . . from the list.” The Examiner relies on Craig for teaching retrieval of “a
list of clients of the real estate agent” from a database, as recited in the first
instance. Final Act. 5 (citing Craig Tflf 16, 27—28, Fig. 4). One cannot show
nonobviousness by attacking references individually when the rejection is
based on a combination of references. In re Keller, 642 F.2d at 425.
As the Examiner finds, and we agree, Otto teaches “a matching engine
that identifies a subset of clients interested in buying a specific property.”
Final Act. 6; see also id. at 5 and Otto Tflf 32-41, Figs. 3A—C, 6. Appellants
provide no persuasive argument or evidence that combining Otto’s
“matching engine” with the list of clients of a real estate agent from Craig’s
“system for managing communication between a real estate agent and one or
more clients” (Craig Abstract) was “uniquely challenging or difficult for one
of ordinary skill in the art.” See Leapfrog Enters., Inc. v. Fisher-Price, Inc.,
485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 419); see also
KSR, 550 at 420—21 (skilled artisans can “fit the teachings of multiple
patents together like pieces of a puzzle” because the skilled artisan is “a
person of ordinary creativity, not an automaton”).
b) “From a Prior Search History ”
The Examiner finds that Otto teaches identifying a prospective buyer
based on preference information, and that Skillen teaches that such
preference information is “identified from a prior search history of the
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prospective real estate buyer,” as recited. Final Act. 5—7 (citing Skillen
2:43—46, 54—57, 66—67; 5:13—23; claims 1, 7). Appellants argue the
Examiner errs because
Skillen generally discusses user profile data that may include or
may be derived from a “prior searching history.” However,
Skillen does not discuss or even contemplate using such “user
preference data” to “identify[] ... a prospective real estate
buyer with potential interest in purchasing the specific MLS-
listed property,” let alone identifying a “prospective real estate
buyer” “from a list of clients of the real estate agent,” as recited
by claim 10.
App. Br. 33 (brackets and ellipsis in original).
This argument is unpersuasive because the Examiner relies on Otto,
not Skillen, for teaching that a prospective buyer is interested in purchasing
the specific MLS-listed property based on preference information. Final
Act. 5—6; see In re Keller, 642 F.2d at 425.
Appellants further argue the Examiner errs because “Otto does not
discuss or even contemplate storing a history of buyer’s searches on which
Skillen’s alleged teaching of ‘deriving a user’s preference information’ may
be performed.” App. Br. 33—34. We disagree. An ordinarily skilled artisan
would have understood Skillen’s unambiguous statement that “user
preference data is derived from prior searching history” (Skillen 7:18—19
(claim 7)) to teach claim 10’s requirement for “preference information
identified from a prior search history,” as recited. In combination with the
teachings of Otto, the artisan would have understood Skillen to teach
identifying preference information from search history information “of the
prospective real estate buyer,” as recited. In re Merck, 800 F.2d at 1097.
“Storing a history of buyer’s searches,” which Appellants argue Otto does
not teach, is not a recited requirement and, regardless, to the extent such a
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requirement implicitly is necessary, an ordinarily skilled artisan would have
understood Skillen implicitly to teach it. See Skillen claim 7.
Thus, the Examiner does not err in finding the combination of Otto
and Skillen teaches all limitations of claim 10’s “identifying ... a
prospective real estate buyer” step, as recited in claim 10.
2. “Causing... an Alert to be Transmitted”
The Examiner finds “the proposed combination of Wilson, Craig, Otto
and Skillen” teaches “causing ... an alert to be transmitted to the identified
prospective real estate buyer based on the prospective real estate buyer being
identified as having potential interest in purchasing specific MLS-listed
property, the alert including multimedia information associated with the real
estate agent’s visit to the specific MLS-listed property,” as claim 10 recites.
Final Act. 7—8 (citing Craig 16, 18, 27, 28, Figs. 3B, 4; Wilson || 79, 95,
300; Figs. 19—24). Appellants argue that “although Craig does discuss notes
being sent to clients, Craig does not discuss notes regarding a specific
property being ‘transmitted to the prospective real estate buyer based on the
prospective real estate buyer being identified as having potential interest in
purchasing the specific MLS-listed property,” as recited.” App. Br. 35.
This argument is unpersuasive because it does not address the
combined teachings of Craig and Otto, and specifically the Examiner’s
finding that Otto teaches identifying a prospective real estate buyer with
potential interest in the specific MLS-listed property. See Final Act. 5—7.
Appellants also argue “[fjurthermore, the ‘notes’ in Craig are clearly
described as being ‘textual’ notes, and Craig does not describe these ‘textual
notes’ as including ‘multimedia information associated with the real estate
agent’s visit to the specific MLS-listed property,’ as recited.” App. Br. 35.
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This argument is unpersuasive because it does not address the Examiner’s
finding that Wilson’s teaching of providing “written feedback, videos, and
pictures” teaches the multimedia information. Final Act. 6—8 (citing Wilson
1179, 95, 300).
Regarding Wilson, Appellants contend its “merely allowing players of
a game to access information about a property based on their participation in
the game” “is not the same as ‘causing ... an alert to be transmitted to the
prospective real estate buyer based on the prospective real estate buyer being
identified as having potential interest in purchasing the specific MLS-listed
property,’ as recited.” App. Br. 35 (ellipsis in original). First, we note that
Appellants characterize Wilson too narrowly. Wilson addresses the need for
“a system that utilizes these databases and locating devices of house-hunters
in order to encourage and facilitate the dissemination of information
between house-hunters, sellers, informed neighbors, and agents” (18) and
“provide[s] a new way for agents to interact with existing clients” (173).
Second, Appellants’ argument is unpersuasive because the Examiner relies
on Craig for teaching sending notifications. See Final Act. 7; see also Ans.
11. Craig specifically teaches a real estate agent can set notification settings
for clients which, as shown in Fig. 3A, can be configured to have
notifications sent automatically to clients when a new match arrives. See
Craig 127, Fig. 3A.
Appellants assert that Otto and Skillen were not relied upon in the
rejection with respect to the “based on the prospective real estate buyer
being identified as having potential interest in purchasing the specific
MLS-listed property” limitations of claim 10’s “causing ... an alert to be
transmitted” step. App. Br. 37—38. Appellants are mistaken—the Examiner
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specifically relies on all four references. See Final Act. 7. Appellants’
contention that, regardless, “Otto and Skillen do not remedy the deficiencies
of Wilson and Craig with respect to the above referenced element” because
“Otto and Skillen fail to discuss or even contemplate ‘identifying, from the
list of clients of the real estate agent, a prospective real estate buyer with
potential interest in purchasing the specific MLS-listed property,’ as recited”
is unpersuasive for the reasons discussed above for the “identifying ... a
prospective real estate buyer” step. App. Br. 38.
Thus, the Examiner does not err in finding the combination of Wilson,
Craig, Otto, and Skillen teach all limitations of the “causing ... an alert to
be transmitted” step, as recited in claim 10.
3. Motivation to Combine Otto with Wilson and Craig
Appellants argue the Examiner errs in finding an ordinarily skilled
artisan would have been motivated to combine Otto with Wilson and Craig
as proposed by the Examiner. App. Br. 38 40.
Craig concerns a “system for managing communication
between a real estate asent and one or more clients.” In
contrast, the goal of Otto ... is to “remove [real estate] agents
as the gatekeepers to communication between potential parties
to a real estate transaction.” Thus, one of ordinary skill in the
art would not be motivated to combine the teachings of Otto
with the teachings of Craig because Otto clearly teaches away
from the alleged teachings of Craig. In other words, the
teachings of the two references are in conflict — Craig teaches
managing communications of a real estate agents with other
parties (e.g., other agents), whereas Otto teaches eliminating
the real estate agent from such communications. Consequently,
due to this clear conflict between the references, one of
ordinary skill in the art would not be motivated to combine the
teachings of Otto with Wilson and Craig.
App. Br. 39.
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A teaching away requires a reference to actually criticize, discredit, or
otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004). “A finding that two inventions were designed to
resolve different problems ... is insufficient to demonstrate that one
invention teaches away from another.” Nat’l Steel Car, Ltd. v. Canadian
Pac. Ry., Ltd., 357 F.3d 1319, 1339 (Fed. Cir. 2004). “[0]bviousness must
be determined in light of all the facts, and there is no rule that a single
reference that teaches away will mandate a finding of nonobviousness.
Likewise, a given course of action often has simultaneous advantages and
disadvantages, and this does not necessarily obviate motivation to combine.”
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006).
Here, the invention of claim 10 is directed to two-way communication
between an agent and potential purchasers. There is no criticism in Otto of
such an invention. There is no dispute as to whether Otto is analogous art
that an ordinarily skilled artisan would have considered along with Wilson
and Craig. The Examiner relies on Wilson and Craig for the requirements of
five of the six steps recited in claim 10, and relies on Otto as a secondary
reference for the remaining step.
Otto’s advantage of disintermediating agents from between buyers
and sellers is irrelevant to the proposition for which the Examiner cites it,
viz, its teaching of identifying prospective buyers with potential interest in
specific MLS-listed property based on preference information. Ordinarily
skilled artisans would have recognized that a teaching of identifying
prospective buyers based on preference information is relevant and useful
both to a seller and to a real estate agent. In other words, that Otto may
teach an advantage of disintermediating an agent from between a potential
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Application 13/027,127
buyer and a seller would not have discouraged the artisan from combining
Otto’s technical teachings related to communicating information between
potential buyers and a seller with the teachings of Wilson and Craig related
to communicating information between potential buyers and a real estate
agent. On the facts here, we agree with the Examiner that “although Otto
and Craig may have been inspired by different concerns when arriving at
their inventions, such differences do not constitute a teaching away from the
proposed combination.” Ans. 12.
4. Conclusion
Accordingly, we sustain the § 103 rejection of claim 10. For the same
reasons we sustain the § 103 rejection of claims 11, 13, 14, 21, 23, 24, 26,
and 27, for which Appellants offer no arguments separate from claim 10.
DECISION
For the above reasons, we affirm the rejections of claims 10, 11, 13,
14, 21, 23, 24, 26, and 27 under 35 U.S.C. §§ 101 and 103(a).
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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