Ex Parte Emison

Patent Trial and Appeal Board

Nov 20, 2018

14185215 (P.T.A.B. Nov. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/185,215 02/20/2014
95450 7590 11/23/2018
NEW RIVER VALLEY INTELLECTUAL
PROPERTY LAW, PC
1750 Kraft Drive
Suite 2200
BLACKSBURG, VA 24060
FIRST NAMED INVENTOR
Joseph Tierney Masters Emison
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.
WR-BLDFX-102 3539
EXAMINER
BRINDLEY, BENJAMIN S
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
11/23/2018 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):
MICHELE.MA YBERRY@NRVIPLA W.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH TIERNEY MASTERS EMISON
Appeal2017-009204
Application 14/185,215
Technology Center 3600
Before JUSTIN BUSCH, JOHN D. HAMANN, and JASON M. REPKO,
Administrative Patent Judges.
BUSCH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision to reject claims 1, 4, 7-10, 25, and 26, which constitute
all the claims pending in this application. We have jurisdiction over the
pending claims under 35 U.S.C. § 6(b ). Claims 2, 3, 5, 6, and 11-24 were
cancelled previously. See Final Act. 2; Adv. Act. 2 (mailed Dec. 23, 2016).
We affirm.
CLAIMED SUBJECT MATTER
Appellant's claimed invention relates to a "Computer-Implemented
Method for Estimating the Condition or Insurance Risk of a Structure."
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Application 14/185,215
Spec., Title. The claimed invention relates to using construction information
( e.g., building permits, warranty records, and building material deliveries) of
a properties to estimate a condition of a target property, which can be used to
make sure the property is properly insured. Spec. ,r,r 1, 3--4. Appellant's
alleged improvement is that additions and improvements to homes can be
estimated based on the records without a subjective in-person inspection
based on the appearance of the target property. Spec. ,r,r 4--5. The claimed
invention uses permit information and other documentation about the target
and other properties to determine the condition of the target property. Spec.
,r,r 7-12. Claims 1 and 25 are independent claims. Claim 1 is reproduced
below:
1. A computer-implemented method for estimating a
physical condition of a target structure, the method comprising:
identifying a target structure for which an estimated
physical condition is desired;
identifying building permit data associated with the target
structure from one or more query of a database, which database
comprises building permit data for a plurality of structures,
including the target structure;
estimating the physical condition of the target structure,
using a computer program operably configured to model the
estimated physical condition based on the following factors, each
factor weighted according to a selected weight:
(i) a type of target property building permits;
(ii) a number of target property building permits over
time;
(iii) a number of target property building permits
relative to non-target property building permits over
time;
(iv) aggregated costs for jobs permitted for a target
property;
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(v) a cost of a job permitted for a target property
relative to a cost of a job permitted for a non-target
property; and
(vi) a cost of a job permitted for a target property
relative to the value of the target property.
REJECTION 1
Claims 1, 4, 7-10, 25, and 26 stand rejected under 35 U.S.C. § 101 as
being directed to ineligible subject matter. Final Act. 3-5, 27-28.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments Appellant made.
Arguments Appellant could have made, but chose not to make in the Brief,
are deemed waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner concludes claims 1, 4, 7-10, 25, and 26 are directed to
judicially excepted subject matter. Final Act. 3; Ans. 3-8. Appellant argues
the§ 101 rejection of all claims as a group. Br. 6-16.
STEP ONE OF ALICE FRAMEWORK
In step one of the Alice analysis, we "determine whether the claims at
issue are directed to" a patent-ineligible concept, such as an abstract idea.
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354--55 (2014).
The Examiner determines the claims are directed to "transmitting
information to assess value," which is a fundamental economic practice that
merely involves organizing information through mathematical correlation
1 Claims 1, 4, 7-14, and 21-26 were rejected under 35 U.S.C. § 103. Final
Act. 6-25. Appellant cancelled claims 11-24 after the Final Action. See
Adv. Act. 2. In the Answer, the Examiner withdrew the previously pending
35 U.S.C. § 103 rejection. Ans. 2.
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and steps for relating to receiving, recognizing, analyzing, and storing data.
Final Act. 3 (citing Digitech Image Techs., LLC v. Elecs. For Imaging, Inc.,
758 F.3d 1344 (Fed. Cir. 2014); Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat'! Assoc., 776 F.3d 1343 (Fed. Cir. 2014)); Ans. 3--4,
6-8 (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351-53
(Fed. Cir. 2016)). The Examiner determines "analyzing information by
steps people go through in their minds, without more, are mental processes
within the abstract-idea category," even when the claims recite using "a
computer or electronic device." Ans. 4.
Appellant argues the claims are not directed to an abstract idea.
Br. 8-9. Specifically, Appellant argues the claims "relate particularly to the
physical condition of that structure" and "there is nothing abstract about an
analysis of real property, the claims also involve calculation steps which
together define a particular way of estimating/classifying the physical
condition of the structure." Br. 8-9. Appellant argues the mere presence of
calculations does not render the claims as being directed to an abstract idea
because "the subject of the claims remains focused on the physical condition
of the structure." Br. 9.
Appellant's claims recite identifying and obtaining information from a
database and using that information to determine other information ( the
condition of a target property). "Data in its ethereal, non-physical form is
simply information that does not fall under any of the categories of eligible
subject matter under section 101." Digitech, 758 F.3d at 1350. The fact that
the information being manipulated relates to a physical, tangible structure is
not relevant to the question of whether Appellant's claims are directed to an
abstract idea because the claims themselves are not to the physical structure.
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Moreover, whether something claimed is concrete or physical is not the test
for determining whether claimed subject matter is judicially-excepted from
patent-eligibility. If that were the case, claims to computers would
necessarily be patent eligible. But that is not the case. See Alice, 134 S.Ct.
at 2358-59 (explaining that a computer's existence in the physical rather
than conceptual realm is not relevant to the analysis).
We agree with the Examiner's conclusions because claim 1 focuses on
obtaining and analyzing information that merely involves mental steps. In
particular, claim 1 recites obtaining information (a target structure and
building permit data in claim 1 or a target structure and construction
information and insurance loss and appraisal records in claim 25) and
analyzing the obtained information ( estimating the target property condition
based on weight various information from the building permit data in claim
1 and classifying the target structure condition applying an algorithm based
on the obtained construction, insurance loss, and appraisal information).
Although claims 1 and 25 recite that the methods are "computer-
implemented," databases, and a computer program or a computer processor
to estimate or classify the target property or structure, these elements do not
change the character of the claims as a whole from being directed to an
abstract idea.
The Federal Circuit has concluded similar concepts were directed to
abstract ideas. Specifically, in Electric Power, the Federal Circuit concluded
claims reciting a method of collecting data from various sources, "detecting
and analyzing events" by identifying information in the received data,
reporting the event analysis results and visualizations of measurements,
aggregating the event analysis information, and providing a composite
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indicator were directed to an abstract idea because the claims were directed
to "collecting information, analyzing it, and displaying certain results of the
collection and analysis." Elec. Power, 830 F.3d at 1351-53. Appellant's
claim 1 similarly collects data from various sources (i.e., permit,
construction, insurance loss, and appraisal databases or records) and
analyzes the data (i.e., using the data to estimate or classify a target property
or structure's physical condition).
Moreover, limiting the particular data analyzed does not change the
character of the claim. See Elec. Power, 830 F.3d at 1353 (stating that
"collecting information, including when limited to particular content (which
does not change its character as information)" is treated as "within the realm
of abstract ideas"). Thus, the particular factors and their weightings that are
used to estimate or classify the property's condition do not change the
character of the claims.
Furthermore, and despite the recitation of the various generic
computer components (databases and a computer program or processor), the
claims are directed to a process that can be done mentally or with pen and
paper. The Federal Circuit has concluded mental processes, even when
peiformed by a computer, are ineligible abstract ideas. Specifically, the
Federal Circuit explained that "purely mental processes can be unpatentable,
even when performed by a computer." CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375-76 (Fed. Cir. 2011). The claims in
CyberSource recited steps for verifying credit card transactions over the
Internet. CyberSource, 654 F.3d at 1370. The Federal Circuit agreed with
the district court that the claimed method "simply requires one to 'obtain and
compare intangible data pertinent to business risks."' CyberSource, 654
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F.3d at 1370 (quoting CyberSource Corp. v. Retail Decisions, Inc., 620
F.Supp.2d 1068, 1078 (N.D. Cal. Mar. 27, 2009)). The Federal Circuit also
determined a computer-implementation of essentially the same method
claiming a mental process was ineligible. CyberSource, 654 F.3d at 1375
("That purely mental processes can be unpatentable, even when performed
by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.").
Appellant also argues that, like the claims in McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), Appellant's claims
"amount to more than merely automating conventional methods" because
Appellant's claims "provide specific ways of estimating/classifying the
physical condition of a structure" and "allow computers to produce accurate
and reliable estimates of property condition without the need for an in-
person evaluation." Br. 14--15. Appellant argues the claimed use of specific
factors to estimate the target property condition and consideration of non-
target property information in claims 1 and 25 is a different and specific way
of estimating property condition from what was previously done. Br. 11-15;
see also Br. 16 ( arguing the identified process is "a significant improvement
to actuarial sciences" and a specific method that improves the relevant
technology). Appellant compares the allegedly different and specific way of
performing an estimate of a target property condition to McRO 's
improvement to a technological process by incorporating rules that allowed
automation of further tasks improve. Br. 15 (citingMcRO, 837 F.3d. at
1314).
Appellant argues, because the claims here are like the McRO claims,
they recite significantly more than the abstract idea. Appellants characterize
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the argument as being under Alice step 2. Br. 15-16. However, as the
Examiner points out, Ans. 4--5, the Federal Circuit determined the claims in
McRO were not directed to an abstract idea and, therefore, did not reach step
2 of the Alice analysis.
Regardless, the Examiner determines Appellant's claims are not like
the claims found eligible in McRO because McRO 's claims were "eligible
because the claimed solution focused upon the specific asserted
technological improvement over existing, manual 3-D animation
techniques." Ans. 4. The Examiner determines that McRO 's invention was
a technological solution to a technological problem but Appellant's claims
simply "provide a generically computer-implemented solution to a business-
related or economic problem," which merely uses computers as tools instead
of claiming an improvement to computers. Ans. 5.
We agree with the Examiner that Appellant's claims are not similar to
the claims found eligible in McRO. Appellant does not persuasively argue
why the claims' recitation of particular calculations or factors are similar to
McRO 's claims that were directed to an improved animation method that
allowed a computer to perform a task it could not previously perform.
Rather, as discussed above, we determine Appellant's claims are more
similar to the claims found ineligible by the Federal Circuit in, for example,
Electric Power and CyberSource.
Thus, we determine the Examiner did not err in concluding that
Appellant's claims are directed to an abstract idea and, thus, we tum to step
2 of the Alice analysis.
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Application 14/185,215
STEP Two OF ALICE FRAMEWORK
In step two of our Alice analysis, we determine whether the additional
limitations, when considered both "individually and 'as an ordered
combination"' contain an "inventive concept" sufficient to transform the
claimed "abstract idea" into a patent-eligible application. Alice, 134 S. Ct. at
2355-58.
The Examiner finds the databases and computer program or processor
are simply generic computing components performing their basic functions
of retrieving and processing data and the computer component limitations
merely amount to implementing the abstract idea on a computer and limiting
the abstract idea to a particular field without adding significantly more to the
abstract idea. Final Act. 4; Ans. 4--5. The Examiner states that, unlike the
claims in DDR, Appellant's claims do not include an inventive technique for
displaying information or any unconventional components. Ans. 4 ( citing
Spec. ,r 182). The Examiner also determines the elements, taken
individually and in combination, do not improve another technology,
technical field or a computer itself. Final Act. 4--5. The Examiner finds the
alleged new features (using the particular recited factors and data) simply
involve analyzing information via mental steps, which is part of the abstract
idea itself. Ans. 4.
Thus, the Examiner concludes the only limitations recited in addition
to the abstract idea are extra-solution data gathering and generic computer
components, which do not add an inventive concept sufficient to transform
the claimed abstract idea into a patent eligible application of that idea.
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Appellant argues claims 1 and 25 recite an inventive concept that adds
significantly more to the abstract idea and renders the claimed subject matter
patent eligible. Br. 9-16.
Specifically, Appellant argues the claims "provide a mathematical
solution for estimating or classifying the physical condition of a structure,"
whereas conventional techniques prior to Appellant's invention involved a
subjective, in-person, evaluation of the appearance and age of the target
property's features (e.g., roof and improvements made to the property) and
did not consider non-target properties. Br. 10-11. Appellant argues the
claimed analysis of the target property, on the other hand, involves
calculations based on information from building permits, construction
information, and insurance loss and appraisal records relating to both the
target property and non-target properties. Br. 11-13.
Appellant argues the claims are unlike the concepts previously found
ineligible by the Federal Circuit relating to hedging, intermediated
settlement, performing well-known demand curve calculations, and
implementing known practices in a new environment. Br. 13-14 ( citing
Bilski v. Kappas, 561 U.S. 593, 611 (2010); Alice, 134 S. Ct. at 2354--55;
OIP Techs. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094--95 (Fed. Cir.
2016) (citing Alice, 134 S. Ct. at 2356-58)).
Appellant's arguments are unavailing. Appellant's claims are
different than the eligible claims in DDR because obtaining permit,
construction, insurance loss, and appraisal data and determining a condition
of a target property is an improvement to a business functionality or process,
not a technical field.
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Moreover, an inventive concept "cannot be furnished by the
unpatentable law of nature (or natural phenomenon or abstract idea)
itself." Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed.
Cir. 2016); see also Alice, 134 S. Ct. at 2355 (explaining that, after
determining a claim is directed to a judicial exception, "we then ask, '[w] hat
else is there in the claims before us?"' ( emphasis added, brackets in original)
(quoting Mayo, 566 U.S. at 78)). Instead, an "inventive concept" is
furnished by an element or combination of elements that is recited in the
claim in addition to the judicial exception and sufficient to ensure the claim
as a whole amounts to significantly more than the judicial exception
itself. Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 72-73); see BSG
TechLLCv. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018)
( explaining that the Supreme Court in Alice "only assessed whether the
claim limitations other than the invention's use of the ineligible concept to
which it was directed were well-understood, routine and conventional,"
( emphasis added)).
On the other hand, "[i]f 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." BSG Tech, 899 F.3d at 1290-91 (citing
Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018)). "[I]t is
irrelevant whether [the claimed abstract idea] may have been non-routine or
unconventional as a factual matter ... narrowing or reformulating an
abstract idea does not add 'significantly more' to it." BSG Tech, 899 F.3d at
1291.
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We agree with the Examiner that only additional components recited
in the claims are the generic and generically recited computing components,
which are insufficient to transform the claimed abstract idea into patent-
eligible subject matter. See Alice, 134 S. Ct. at 2358-59; see also Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324--25 (Fed.
Cir. 2016) (noting that components such an "interface," "network," and
"database" are generic computer components that do not satisfy the
inventive concept requirement); buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) ("That a computer receives and sends the
information over a network-with no further specification-is not even
arguably inventive."). That is, the claims invoke computers merely as a tool
to implement the abstract idea for obtaining and analyzing information in a
particular way. See BSG Tech, 899 F.3d at 1286.
Simply using a generic computer to automate a process does not
confer eligibility onto an otherwise abstract idea because it does not improve
a computer or technology, but rather improves the process itself. See
Gottschalkv. Benson, 409 U.S. 63, 67 (1972) (explaining that the claimed
steps could easily "be carried out in existing computers long in use, no new
machinery being necessary"); CyberSource, 654 F.3d at 1375-76
( explaining that "purely mental processes can be unpatentable, even when
performed by a computer"); see also Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) ("[O]ur precedent is
clear that merely adding computer functionality to increase the speed or
efficiency of the process does not confer patent eligibility on an otherwise
abstract idea."). Thus, the claims' recitation of databases and a computer
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processor or program neither changes the claims' character (as discussed
above) nor confers patent-eligibility.
Moreover, Appellants do not contend any of the recited components
provide an inventive concept. Nor does Appellant contend the estimating
and classifying steps must be performed by a computer processor or
program-i.e., Appellant does not dispute these steps could be performed
mentally.
Thus, the claimed limitations, considered both individually and
together, do not add significantly more to the abstract idea and, therefore, do
not render the subject matter patent eligible.
PREEMPTION
Appellant argues the claims "do not preempt the traditional
approaches to solving the estimating/classifying problem and would not
preempt approaches that use a different combination of factors." Br. 16.
The Examiner notes that "the absence of complete preemption does not
demonstrate patent eligibility, or make the idea less abstract." Ans. 5-6
(citing OIP Techs., 788 F.3d at 1362---63).
The Examiner is correct that preemption is not determinative of
eligibility; preemption is not a standalone test. To the extent Appellant's
claims do not preempt all traditional approaches of estimating or classifying
using different factors, we disagree that this demonstrates patent eligibility
in this case.
Appellant's claims limit the identified abstract idea only by limiting
the particular information used to estimate or classify the target property.
Moreover, although "preernption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility
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.... Where a patent's claims are deemed only to disclose patent ineligible
subject matter under the lviayo framework, as they are in this case,
preemption concen1s are fully addressed and made moot." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP Techs., 788 F.3d at 1362---63 ("And [the fact] that the claims do
not preempt all price optimization or may be limited to price optimization in
the e-commerce setting do [es] not make them any less abstract.").
SUMMARY
For the above reasons, Appellants have not persuaded us the
Examiner erred in rejecting claims 1, 4, 7-10, 25, and 26 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
DECISION
The Examiner's decision to reject claims 1-3, 5-7, 10, 11, 13-15, 18,
19, and 21-27 is affirmed. See 37 C.F.R. § 4I.50(a)(l).
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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