Kochevar, Peter D. et al.

Patent Trials and Appeals Board

Mar 16, 2020

13479920 - (D) (P.T.A.B. Mar. 16, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/479,920 05/24/2012 Peter D. Kochevar CRA-107US 5776
13173 7590 03/16/2020
Blue Filament Law
700 E. Maple Road
Suite 450
Birmingham, MI 48009
EXAMINER
EVANS, KIMBERLY L
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
03/16/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ag@bluefilamentlaw.com
ap@bluefilamentlaw.com
patentdocketing@bluefilamentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER D. KOCHEVAR and RANDALL RAY
Appeal 2018-006003
Application 13/479,920
Technology Center 3600
Before JOSEPH L. DIXON, JUSTIN BUSCH, and JAMES W. DEJMEK,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims. See Final Act. 1. An oral hearing was
held on February 25, 2020. A transcript of the hearing will be placed in the
record in due course. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2017). Appellant identifies the real party in interest as Peter D.
Kochevar and Randall Ray. (Appeal Br. 2.)
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CLAIMED SUBJECT MATTER
The claims are directed to a facility safety and compliance
information system and Web-based application for managing information
about deficiencies and repairs to facilities. (Spec. ¶ 2.) Claim 1, reproduced
below, is representative of the claimed subject matter:
1. A facility safety and compliance information system for
the automated management of information about deficiencies
and repairs to a facility, said system comprising:

a server connected via a network to one or more client user
devices;

a database module resident on said server that stores wall
or floor penetration data, safety, and compliance information;

an interface generated by a processor of said server and
sent via said network to said one or more client user devices, said
interface providing access to said database for use by said client
users, said interface is viewable on said client device configured
with a display;

a field survey and repair module resident on said server
configured to receive via said network from said one or more
client user devices user inputted information using said interface,
the inputted information forming a survey and repair report
regarding wall or floor penetration deficiencies, wall or floor
penetration breaches, and repairs related to the wall or floor
penetration breaches for said facility, and when the need for the
repair was discovered, location and type of repair performed, and
when the repair was performed by the client user;

wherein said field survey and repair module is operative
in an online mode on said one or more client devices or in an
offline mode when the online mode is unavailable,
information inputted by the client user is put in a local cache
memory on said one or more client devices, and when said
network is available the information inputted in the offline
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mode is automatically uploaded from the local cache on the
client device to said database module on said server of the
facility safety and compliance information system: and

an electronic documentation request feature on said
interface for said client users to request electronic
documentation for a set of products and materials used in a
repair of a particular wall or floor penetration deficiency or
breach from one or more suppliers and manufacturers for
automatic inclusion into the survey and repair report, where
the survey and repair report comprises a written description
of the particular wall or floor penetration deficiency within
said facility, a written description of the repairs thereof,
before photographs of the particular wall or floor penetration
deficiency, after photographs of the repairs, and repair
documentation of fire integrity engineering reports from the
suppliers and manufacturers.
REFERENCES
The prior art relied upon by the Examiner is:
Sinisi US 2004/0128613 A1 July 1, 2004
Gill et al. US 2012/0224057 A1 Sept. 6, 2012

REJECTIONS2
Claims 1–4, 7–12, 15–18, and 20 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to a judicial exception (i.e. a law of
nature, a natural phenomenon, or an abstract idea) without significantly
more.
Claims 1–4, 7–12, 15–18, and 20 stand rejected under 35 U.S.C.
§103(a) as being unpatentable over Sinisi in view of Gill.

2 The Examiner has withdrawn the rejection under 35 U.S.C. § 112, first
paragraph. (Ans. 3.)
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OPINION
35 U.S.C. § 101
I. Claims 1–4, 7–12, 15–18, and 20
With respect to patent eligibility of independent claims 1 and 20,
Appellant does not set forth separate arguments for patentability of the
claims. Therefore, we select independent system claim 1 as the
representative claim for the group and will address Appellant’s arguments
thereto. 37 C.F.R. § 41.37(c)(1)(iv).

A. Legal Principles
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
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
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Concepts determined to be abstract ideas and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 192 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
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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 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The U.S. Patent and Trademark Office (“USPTO”) published revised
guidance on the application of § 101. USPTO’s January 7, 2019
Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance
(“Memorandum”). Under that 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 Manual of Patent Examining Procedure (“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, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
See Memorandum.
B. The Examiner’s Conclusions and Appellant’s Arguments
The Examiner concludes the present claims recite an “abstract idea for
managing wall or floor penetration information about deficiencies and
repairs to facilities,” which is one of certain methods of organizing human
activity. (Final Act. 12; Ans. 5 (concluding claims are directed to the
abstract idea of managing information regarding deficiencies and repairs to a
facility).) The Examiner also determines the present claims do not amount
to significantly more than an abstract idea itself because the abstract idea is
implemented using additional elements that are well-understood, routine,
and conventional. (Final Act. 12–15; Ans. 7–9 (citing Spec. ¶¶ 9, 13, 15,
37).)
Appellant contends although the claim recites the abstract idea of
comparing and organizing data for transmission, the claim is patent eligible
because it recites additional limitations that, when considered as an ordered
combination, demonstrate a technologically rooted solution to an Internet-
centric problem and thus amounts to significantly more than comparing and
organizing information for transmission. (Appeal Br. 19–20; Reply Br. 2–
3.)
Appellant argues that the rejection of claims under 35 U.S.C. § 101 is
unsupported by factual evidentiary findings as required by Berkheimer.
(Reply Br. 2–3 (citing Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir.
2018)).) Appellant further contends that the “claims recite physical
components and include physical transformations sufficient to remove the
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claims from a full review under 35 U.S.C. § 101.” (Reply Br. 3.) Appellant
further contends that the claims recite a system of integrated physical
components including a server, user devices, an interface, a repair report,
photographs, and physical repair to a facility and the rejection ignores
physical components and physical transformations.” (Reply Br. 3.) We
disagree with Appellant.
We note that the language of independent claim 1 does recite physical
elements but does not recite any physical transformations.
Appellant further argues the present claims are necessarily rooted in
technology to solve problems specifically arising in the realm of technology.
(Appeal Br. 18–22 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014)); Reply Br. 4–5 (citing Spec. ¶¶ 12–13).)

C. Discussion
1. Step 2A, Prong 1
Patent eligibility under 35 U.S.C. § 101 is a question of law that is
reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333
(Fed. Cir. 2012). We, therefore, conclude the emphasized portions of claim
1, reproduced above, recite commercial interactions including sales activities
or business relations because claim 13 requires data processing, management

3 Claim 1, reproduced above with emphases, recites similar features as
independent claim 20. Appellant does not argue claims 2–4, 7–12, 15–18
and 20 separately, but asserts the § 101 rejection of those claims should be
withdrawn for at least the same reasons as argued for independent claim 1.
(Appeal Br. 12–22.) We, therefore, group claims 1–4, 7–12, 15–18 and 20,
and 25 together.

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of information about deficiencies and repairs to a facility.4 The Examiner
further maintains:
The claim(s) as a whole is based on conventional technology
which is a fundamental economic practice (i.e. storing,
providing, displaying, receiving, uploading, reporting), and the
claim(s) as a whole further describe concepts relating to
commerce, such as agreements between people in the form of
contracts, legal obligations, and business relations as in
[buySAFE] (. . . safety and compliance information . . . client
users); related to an idea of itself having common characteristics
to [FairWarning] ‘collecting and analyzing information to detect
misuse and notifying a user when misuse is detected (“. . . a
database . . . stores wall or floor penetration data, safety and
compliance information . . . survey and repair report . . . wall or
floor penetration deficiencies . . . wall or floor penetration
breaches, and repairs related to the wall or floor penetration
breaches for a facility . . . when the repair was discovered ...
location . . . type . . . when the repair was performed . . .”; and
similar to certain methods of organizing human activity as in
[Electric Power Group] ‘collecting information, analyzing it and
displaying certain results of the collection and analysis.
(Final Act. 13.) Although the Examiner further maintains that the claimed
invention corresponds to multiple of the “certain methods of organizing
human activity” (Ans. 5–7), we determine that the claimed invention recites
“managing information regarding deficiencies and repairs to a facility,”
which is a mental process and thus an abstract idea. Concepts performed in
the human mind (including an observation, evaluation, judgment, opinion.)
See Memorandum 52. Alternatively, the claimed invention may recite one

4Additionally, under the broadest reasonable interpretation, we note that the
language of independent claim 1 is drafted using alternative language of a
server based hardware which requires only offline acquisition and
recordation of deficiency and repair data to a single facility based upon a
single interface on one client device.
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of the certain methods of organizing human activity. Certain methods of
organizing human activity include fundamental economic principles or
practices (including hedging, insurance, mitigating risk); commercial or
legal interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or interactions
between people (including social activities, teaching, and following rules or
instructions). See Memorandum 52.
According to the Memorandum, commercial interactions including
sales activities or business relations fall into the category of certain methods
of organizing human activity. See Memorandum. Moreover, those certain
methods of organizing human activity are a type of an abstract idea. See id.;
see also Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d
1364, 1372 (Fed. Cir. 2017) (verifying payment information, as well as
“financial transactions . . . and data collection related to such transactions”
“are directed to an abstract idea under Alice step one.”); buySAFE, 765 F.3d
at 1352–54 (Claims reciting sending and receiving communications over a
computer network to facilitate online commercial transactions are directed to
“contractual relations, which are intangible entities” and “constitute[] ‘a
fundamental economic practice long prevalent in our system of
commerce.’”).
We, therefore, agree with the Examiner’s conclusion that the present
claims recite ineligible subject matter of a mental process or certain methods
of organizing human activity. (Final Act. 12–13; Ans. 6–7.) We, therefore,
disagree with Appellant’s argument the Examiner fails to identify clearly the
abstract idea and, accordingly, does not establish a prima facie case of
subject matter ineligibility. (Appeal Br. 17.) Because the present claims
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recite a mental process or certain methods of organizing human activity (i.e.,
an abstract idea), we proceed to prong 2.

2. Step 2A, Prong 2
The present claims do not integrate the abstract idea into a practical
application because they do not impose any meaningful limits on practicing
the abstract idea. In particular, we disagree with Appellant’s argument that
the present claims recite an improvement in computer-related technology.
Claim 1 recites in the last phrase “electronic documentation request
feature” and further includes “automatic inclusion” into the report, which
Appellant contends was “IMPOSSIBLE in the manual prior art of
firestopping documentation.” Appellant further contends that this eliminates
the step of obtaining documentation from a material supplier and placing it
into the building firestopping book that is required by regulation to be
available for fire marshal inspection and that the claimed solution that is
“necessarily rooted in computer technology,” which could not be addressed
without a computer-based system. (Appeal Br. 21.)
We disagree with Appellant’s argument and find that the claim
language merely initiates an unclaimed process with a “request,” and the
actual inclusion into the unclaimed “facility book” is not part of the claimed
invention. (See dependent claim 9.)
Appellant does not identify persuasively how the Specification sets
forth an improvement in technology. The USPTO October 2019 Patent
Eligibility Guidance Update (“Update”, available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df), addresses how we consider any evidence that is presented to us. The
Update states:
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[d]uring examination, the examiner should analyze the
“improvements” consideration by evaluating the specification
and the claims to ensure that a technical explanation of the
asserted improvement is present in the specification, and that the
claim reflects the asserted improvement. Generally, examiners
are not expected to make a qualitative judgment on the merits of
the asserted improvement. If the examiner concludes the
disclosed invention does not improve technology, the burden
shifts to applicant to provide persuasive arguments supported by
any necessary evidence to demonstrate that one of ordinary skill
in the art would understand that the disclosed invention improves
technology. Any such evidence submitted under 37 C.F.R.
§ 1.132 must establish what the specification would convey to
one of ordinary skill in the art and cannot be used to supplement
the specification. For example, in response to a rejection under
35 U.S.C. § 101, an applicant could submit a declaration under
§ 1.132 providing testimony on how one of ordinary skill in the
art would interpret the disclosed invention as improving
technology and the underlying factual basis for that conclusion.
Update 13 (footnote omitted, emphasis added).
In this case, the Examiner concludes the present claims do not recite
an improvement to technology. (Final Act. 3, 5, 7–8; Ans. 4–6, 8–9.)
Consequently, we focus on any evidence Appellant cites pursuant to the
Update. Here, Appellant only cites paragraphs 12 and 13 in the
Specification as a building maintenance tool, but the claim does not recite
maintenance and only acquires data. The Specification merely identifies that
the “facility safety and compliance information system leverages computer
information system, network, and communication technologies for
automating the collection of data and the generation of regulatory and
compliance documentation.” (Spec. ¶ 13.; Reply Br. 4–5.) Therefore, the
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arguments in the Appeal Brief and Reply Brief are merely attorney argument
unsupported by evidence.5 (Reply Br. 4–5.)
In addition, we agree with the Examiner’s position that the claims are
not an improvement to computer technology. (Ans. 7–8.) In Enfish,6 the
Federal Circuit considered how the present invention was superior to the
technology in the prior art. That is, the court considered “the specification’s
emphasis that ‘the present invention comprises a flexible, self-referential
table that stores data,’” “[t]he specification also teaches that the self-
referential table functions differently than conventional database structures,”
and “traditional databases, such as ‘those that follow the relational model
and those that follow the object oriented model[,]’ are inferior to the claimed
invention.” Enfish, LLC v. Microsoft Corp., 822 F.3d at 1337 (citations
omitted). Moreover, in Enfish, “‘[t]he structural requirements of current
databases require a programmer to predefine a structure and subsequent
[data] entry must conform to that structure,’ [and] the ‘database of the
present invention does not require a programmer to preconfigure a structure
to which a user must adapt data entry.’” Id. Based on the foregoing, the
court determined the claims “achieve[d] other benefits over conventional
databases, such as increased flexibility, faster search times, and smaller
memory requirements.” Id. Unlike the claims of Enfish, the present claims
do not recite an improvement in computer-related technology.

5 It is well settled that mere attorney arguments and conclusory statements,
which are unsupported by factual evidence, are entitled to little probative
value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not
evidence).
6 Enfish, LLC v Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)
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Instead, the present claims recite an abstract idea as discussed above,
or at best, improving an abstract idea—not a technological improvement.
The Specification indicates the additional elements (server, database,
processor, field survey and repair module, cache memory, client device)
recited in the present claims are merely generic computer components used
to implement the abstract idea. (Ans. 10–11 (citing Spec. ¶¶ 9, 13, 15, 37).)
Further, the generic computer components, individually and in
combination, do not integrate the judicial exception into a practical
application.
Additionally, “a claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (emphasis added). “[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility.” Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations omitted).
Appellant does not make any other arguments pertaining to step 2A,
prong 2. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.

3. Step 2B
We agree with the Examiner’s determination that the additional
elements implementing the abstract idea are well-understood, routine, and
conventional. Final Act. 4–6; Ans. 5 (citing buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350 (Fed. Cir. 2014); OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359 (Fed. Cir. 2015); Bancorp Servs., LLC v. Sun Life Assurance Co.,
687 F.3d 1266, 1278 (Fed. Cir. 2012).
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The claim recites a server, a database module, a survey and repair
module, a network, a client user device, a cache memory, and a local cache
memory.
The Specification discloses the claimed additional elements as well-
understood, routine, and conventional computer, network, and user interface
elements:
The system 200 includes multimedia devices 202 and desktop
computer devices 204 configured with display capabilities 214.
The multimedia devices 202 are optionally mobile
communication and entertainment devices, such as cellular
phones and mobile computing devices that are wirelessly
connected to a network 208. The multimedia devices 202 have
video displays 218 and audio outputs 216. The multimedia
devices 202 and desktop computer devices 204 are optionally
configured with internal storage, software, and a graphical user
interface (GUI) for carrying out elements of the facility safety
and compliance information system according to embodiments
of the invention. The network 208 is optionally any type of
known network including a fixed wire line network, cable and
fiber optics, over the air broadcasts, satellite 220, local area
network (LAN), wide area network (WAN), global network
(e.g., Internet), intranet, etc. with data/Internet capabilities as
represented by server 206. Communication aspects of the
network are represented by cellular base station 210 and antenna
212. In a preferred embodiment, the network 208 is a LAN and
each remote device 202 and desktop device 204 executes a user
interface application (e.g., Web browser) to contact the server
system (e.g., main FIS backend 100 of FIG. 1) 206 through the
network 208. Alternatively, the remote devices 202 and 204 may
be implemented using a device programmed primarily for
accessing network 208 such as a remote client.
(Spec. ¶ 37.) The Specification further discloses:
FIS, a complete version of the FIS backend, including the
database management system and the Web application server, is
installed by client users on their portable computing and
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communications devices to form a local FIS backend such as
laptop computers, tablet computers, or smart cellular telephones.
The local FIS backends are termed “satellites” to distinguish the
local FIS backends from the main FIS backend. A satellite and
the main FIS backend are in communication with one another via
a virtual peer-to-peer network layered on top of the Internet when
a client user’s computing and communications device in the
field has Internet connectivity. The operation of the peer-to-peer
network is transparent to the client user, who sees a single system
with a single point of entry or interface to the FIS. The point of
entry to the FIS is an access program that installs on the client
device that initiates access to the FIS.
(Spec. ¶ 24.) The Specification further discloses “[p]ortable client devices
might be laptop computers, tablet computers, smart cellular telephones, or
other computing and communications devices inspect.” (Spec. ¶ 21.) The
Specification does not identify details of the cache memory, but storage is
resident on the client device. (Spec. ¶ 28.) The Specification also discloses
that the “portable client devices connect to the Internet wirelessly via local
area networks (LAN), wide area networks WAN, Wifi, WIMAX, satellite,
cellular telephone network, or other known or available wireless network
connections.” (Spec. ¶ 21.)
The Examiner maintains that “[n]othing in the claims, understood in
light of the specification, requires anything other than off-the-shelf,
conventional computer, network, and display technology for storing,
providing, displaying, receiving, uploading, and reporting the desired
information (see appellant’s disclosure at least ¶9, ¶13, ¶15, ¶37[)].”
(Ans. 10–11.)
We agree with the Examiner that Appellant’s Specification indicates
these additional elements were well-understood, routine, and conventional
components because it describes them at a high level of generality and in a
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manner that indicates that they were sufficiently well-known. Moreover, the
additional elements recited in the present claims, analyzed individually or in
combination, does not result in the claim, as a whole, amounting to
significantly more than the judicial exception.
We also disagree with Appellant’s argument thatthe Examiner fails to
provide clear and convincing evidence to support the finding that the
additional elements implementing the abstract idea are well-understood,
routine, and conventional. (Reply Br. 3–4.) Indeed, as noted above, the
Examiner provides citations to the Specification (Ans. 10–11 (citing Spec.
¶¶ 9, 13, 15, 37)) and the Specification supports the Examiner’s
determination in this regard because it explains that the additional elements
are generic computer components.
Appellant does not argue claims 2–4, 7–12, 15–18, and 20 separately,
but asserts the § 101 rejection of those claims should be withdrawn for at
least the same reasons as argued for independent claim 1. (Appeal Br. 11–
22.) Accordingly, we sustain the Examiner’s rejection of: (1) independent
claims 1 and 20; and (2) dependent claims 2–4, 7–12, and 15–18 under
35 U.S.C. § 101. We have only considered those arguments that Appellant
actually raised in the Briefs. Arguments Appellant could have made, but
chose not to make, in the Briefs have not been considered and are deemed to
be waived. See 37 C.F.R. § 41.37(c)(1)(iv).

35 U.S.C. § 103
With respect to obviousness of independent claims 1 and 20,
Appellant does not set forth separate arguments for patentability of the
claims. Therefore, we select independent method claim 20 as the
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representative claim for the group and will address Appellant’s arguments
thereto. 37 C.F.R. § 41.37(c)(1)(iv).
At the outset, we note that representative claim 20 is a method which
does not recite online and offline modes of operation. Additionally claim 20
is drafted based upon a “server” functionality where the client device is used
as an input device for data via an interface. We further note claim terms are
to be given their broadest reasonable interpretation, as understood by those
of ordinary skill in the art and taking into account whatever enlightenment
may be had from the Specification. In re Morris, 127 F.3d 1048, 1054 (Fed.
Cir. 1997). “In the patentability context, claims are to be given their
broadest reasonable interpretations . . . limitations are not to be read into the
claims from the specification.” In re Van Geuns, 988 F.2d 1181, 1184 (Fed.
Cir. 1993) (citations omitted). Here, the language of representative
independent claim 20 merely sets forth broad limitations.
We find the language of representative independent claim 20 to be
broader than Appellant’s proffer in their arguments because there are no
“books” and “updating a survey” required in the claim language.
Additionally, in representative independent claim 20 only “one client user
device” is impliedly required. Moreover, the “field survey and repair
module resident on said server and updating said database” is drafted using
alternative language where the interface is operative in either an “online
mode on said one or more client devices or in an offline mode” as in
independent claim 1. Consequently, either an offline or an online mode is
sufficient to meet the language of representative independent claimed 20.
We find that the Sinisi reference discloses an off-line mode for
inputting mobile data collection in which a handheld device is used to
collect and integrate multiple types of data, such as data related to building
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inspections. (Sinisi ¶ 3.) Additionally, the Sinisi reference discloses that the
central processing system 14 can provide updated firmware for templates for
data interface to the handheld devices 12. (Sinisi ¶¶ 45, 51, 60.)
Appellant repeats the Examiner’s rejection and maintains that the
Examiner has not made a proper showing of obviousness of “automatically
updating the survey, as well as the element of the duration of time in terms of
comparing before and after photographs of the repaired wall or floor
penetration deficiency.” (Appeal Br. 28.) Appellant further contends that “all
claims are novel and allowable over Sinisi and other cited prior art.” (Appeal
Br. 29.) But we note that the claims are rejected based upon obviousness.
Appellant further argues that “Sinisi is wholly silent as to the claimed recitation
of automatically updating the survey, as well as the element of the duration of
time in terms of comparing before and after photographs of the repaired wall or
floor penetration deficiency.” (Appeal Br. 29.)
The Examiner maintains that Appellant’s arguments are not
commensurate in scope with the express claim language, and the Examiner
further details the portions of the Sinisi and Gill references as they apply to
the claimed invention. (Ans. 12–17.) We agree with the Examiner.
Arguments must be commensurate in scope with the actual claim
language. In re Self, 671 F.2d 1344, 1348 (CCPA 1982); see In re Hiniker
Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (“[The] proffered facts . . . are not
commensurate with the claim scope and are therefore
unpersuasive.”). Therefore, we conclude Appellant has not shown error in
the Examiner’s factual findings or conclusion of obviousness of
representative independent claim 20.
We note that the language of independent claim 20 recites “storing
said user inputted information in a field survey and repair module resident
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on said server and updating said database in response to the client user input
and generating a survey and repair report” and the Sinisi reference teaches
and suggests inputting data and updating the database. (Sinisi ¶ 57.) We
further note that the Examiner has relied upon paragraphs 52, 55, 59, 81, 88,
and 104 of the Sinisi reference which show updating the template with
additionally available data records. (Final Act. 23–24, 46–47.)
Appellant further contends that the Examiner has not set forth a prima
facie case of obviousness with regards to “one or more client user devices,”
and Appellant further suggests that the claimed invention was technically
impossible at the time of filing of Sinisi and, as such, it cannot be enabling
for the above highlighted aspects of the claim, as a hand held device with
such capabilities did not then exist. (Appeal Br. 29–30.) Again, Appellant’s
argument is not commensurate in scope with the language of independent
claim 20 because the aspects of the handheld unit are not specifically recited
in the language of independent claim 20 which recites limitations regarding
the “server” and not the “client device” beyond the interface application.
We note that the Specification discloses:
The implementation of FIS [Firestopping Information System]
utilizing computer information system, network, and
communication technologies automates the collection of
information and documentation, and replaces the current,
predominantly manual process that firestopping companies and
facility managers now use to collect data and generate
documentation. The use of FIS improves the timeliness and
accuracy of a facilities reporting, preparedness, and adherence to
safety and compliance codes.
(Spec. ¶ 14.)
Appellant further argues that “the technology to perform the presently
claimed functionality simply did not exist at the time of the Sinisi invention”
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and provides an appendix of some Internet accessible mobile devices at the
time of the Sinisi invention. (Reply Br. 5, App’x A.)
We note that the appropriate consideration of prior art is at the time of
the invention rather than the time of the prior art disclosure. Consequently,
Appellant’s photos are not relevant to the time of the invention and are just
attorney argument unsupported by the actual functionality of the proffered
Internet accessible mobile devices. Attorney arguments and conclusory
statements that are unsupported by factual evidence are entitled to little
probative value. Geisler, 116 F.3d at 1470; see also In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984); and Ex parte Belinne, 2009 WL 2477843, at
*3–4 (BPAI Aug. 10, 2009) (informative); see also In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011).
As a result, Appellant’s arguments do not show error in the
Examiner’s factual findings or the conclusion of obviousness of
representative independent claim 20. Because Appellant has not set forth
separate arguments for patentability of claims 1–4, 7–12, 15–18, and 20,
these claims will all fall with representative independent claim 20.
37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
The Examiner’s rejections are affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 7–12,
15–18, 20
101 Patent eligibility 1–4, 7–12,
15–18, 20

1–4, 7–12,
15–18, 20
103 Sinisi and Gill 1–4, 7–12,
15–18, 20

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome:
1–4, 7–12,
15–18, 20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED