Ex Parte Erbey et al

Patent Trial and Appeal Board

Sep 29, 2017

13611299 (P.T.A.B. Sep. 29, 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.
13/611,299 09/12/2012 William C. Erbey 10531-010US2 8726
124539 7590 10/03/2017
Altisource
EXAMINER
Meunier Carlin & Curfman, LLC
999 Peachtree Street NE
PATEL, JAGDISH
Suite 1300
Atlanta, GA 30309
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
10/03/2017 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):
docketing@mcciplaw.com
ipcounsel @ altisource. com
Sunette.Pilat@ altisource.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM C. ERBEY, CHRISTOPHER KENNEDY,
BRYAN HURLEY, and ANDREW COMBS
Appeal 2016-0027971
Application 13/611,2992
Technology Center 3600
Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
decision to reject claims 1—20. We have jurisdiction under § 6(b).
We AFFIRM.
1 Our Decision references Appellants’ Specification (“Spec.,” filed Sept. 12,
2012), Supplemental Appeal Brief (“Appeal Br.,” filed Aug. 13, 2015), and
Reply Brief (“Reply Br.,” filed Jan. 11, 2016), as well as the Examiner’s
Final Office Action (“Final Act.,” mailed Jan. 7, 2015) and Answer (“Ans.,”
mailed Nov, 10, 2015).
2 Appellants identify Altisource Solutions S.a.r.l. as the real party in interest.
Appeal Br. 3.
Appeal 2016-002797
Application 13/611,299
SUBJECT MATTER ON APPEAL
The invention “relates to methods and systems for facilitating real
estate transactions by providing accurate representations of the loans a
borrower is qualified to receive, which are based on actual data, rather than
estimates.” Spec. 12. Claims 1, 9, and 19 are the independent claims on
appeal. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for electronically facilitating a mortgage loan
transaction via at least one processor and memory operatively
coupled to the at least one processor, the method comprising:
receiving data associated with a plurality of loan products;
receiving data associated with a borrower;
generating, via the at least one processor, a decision matrix
for the borrower comprising an extrapolation of a combination
of the borrower data and the plurality of loan product data to
provide an accurate description of the borrower’s qualification
for specific loan products from the received plurality of loan
products;
generating, via the at least one processor, a list of loans the
borrower is approved for based on the extrapolated information
from the decision matrix;
receiving, via the at least one processor, a selection of an
approved loan product from the generated list of loans; and
automatically, via the at least one processor, ordering sub­
transactions associated with the selected approved loan product
that are necessary to facilitate the closing of the selected
approved loan product.
REJECTION
The Examiner rejects claims 1—20 under 35 U.S.C. § 101 as non-
statutory subject matter.
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ANALYSIS
In rejecting the claims under 35 U.S.C. § 101, the Examiner applies
the two-step framework set forth in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1297—98 (2012) and
reiterated in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct.
2347, 2355 (2014), which considers, in the first step, whether the claims are
directed to a patent-ineligible concept, e.g., an abstract idea, and then, in a
second step, whether the claims, individually and as an ordered combination,
recite an inventive concept—an element or combination of elements
sufficient to ensure the claims amount to significantly more than the abstract
idea and transform the nature of the claims into a patent-eligible application.
Final Act. 3—9. Appellants argue the Examiner erred under both steps of the
analysis. We have carefully considered Appellants’ arguments, and for the
reasons discussed below, Appellants do not apprise us of Examiner error.
As an initial matter, we are unpersuaded by Appellants’ argument that
the claims do not preempt all applications of the abstract idea.
Appeal Br. 14. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354).
Turning to the patent-eligibility analysis and beginning with the first
step, Appellants argue the Examiner erred in finding the claims are directed
to the abstract idea of performing an underwriting decision for a loan
application. Appeal Br. 8. In the Answer, the Examiner analyzes the claim
limitations and finds that the claims are directed to “ordering an item from a
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vendor based upon budget consideration.” Ans. 4. Appellants do not
address this characterization of the claims, and, consequently, do not apprise
us of Examiner error.
Appellants further argue the claims are not directed to a fundamental
economic practice because they are novel and nonobvious. Appeal Br. 9—
11; Reply Br. 2—5. Appellants’ argument is not persuasive of error.
As set forth above, the Examiner finds the claims are directed to
“ordering an item from a vendor based upon budget consideration.” Ans. 4.
Even if the claims recite specific features which may distinguish the claims
from the prior art, there is no indication that these specific features separate
the claims from the concept of “ordering an item from a vendor based upon
budget consideration.” For example, a method that uses a decision matrix
comprising an extrapolation of a combination of the borrower data and the
plurality of loan product data is nonetheless a method of “ordering an item
from a vendor based upon budget consideration.” The specific claim
limitations are tied to the concept of “ordering an item from a vendor based
upon budget consideration” and simply suggest that the Examiner’s
characterization is at a high level of abstraction, which is not persuasive of
error. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016) (“An abstract idea can generally be described at different levels of
abstraction. As the Board has done, the claimed abstract idea could be
described as generating menus on a computer, or generating a second menu
from a first menu and sending the second menu to another location. It could
be described in other ways, including, as indicated in the specification,
taking orders from restaurant customers on a computer.”).
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Aside from relying on the purported novel and nonobvious steps of
the claims, which do not separate the claimed invention from the concept of
“ordering an item from a vendor based upon budget consideration,”
Appellants do not explain why “ordering an item from a vendor based upon
budget consideration” is not a fundamental economic practice. Indeed,
selecting a product or service based on a buyer’s budget is an economic
practice long prevalent in our system of commerce. Given that Appellants
do not apprise us of error in the Examiner’s finding that the claims are
directed to “ordering an item from a vendor based upon budget
consideration,” which is a fundamental economic practice, we are not
persuaded the Examiner erred in determining the claims are directed to an
abstract idea.
After considering Appellants’ arguments pursuant to the first step of
the patent-eligibility analysis, we are not persuaded of Examiner error.
Accordingly, we turn to Appellants’ arguments under the second step.
Appellants assert that the present claims are patent-eligible according
to the Federal Circuit’s decision DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014). Appeal Br. 11—12. According to
Appellants, in DDR, the Federal Circuit found claims addressing a business
challenge to be patent-eligible. Id. at 12 (citing DDR, 773 F.3d at 1257).
Appellants further contend that in light of DDR, there is no requirement for
the claims to provide a significant advance in science and technology to
amount to significantly more than the abstract idea. Id. Appellants’ reliance
on DDR does not apprise us Examiner error.
Contrary to Appellants’ argument, the Federal Circuit, in DDR, did
not find claims directed to a business challenge to be patent-eligible. Rather,
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the Federal Circuit specifically held that the claims address a technical
problem, namely a problem unique to computers. In DDR, the Federal
Circuit determined that the claims address the problem of retaining website
visitors who, if adhering to the routine, conventional functioning of Internet
hyperlink protocol, would be transported instantly away from a host’s
website after clicking on an advertisement and activating a hyperlink. 773
F.3d at 1257. The Federal Circuit, thus, held that the claims are directed to
statutory subject matter because they claim a solution “necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.” Id.
Here, we fail to see how the claimed invention addresses a technical
problem or how the claimed invention is rooted in computer technology.
Appellants contend that the claims recite “technological improvements to the
technology of facilitating loan transactions.” Appeal Br. 15. Yet,
facilitating loan transactions is a business issue, not a technical one.
Accordingly, we see no parallel between the present claims and the patent-
eligible claims in DDR, and we disagree with Appellants that the present
claims are patent-eligible pursuant to the Federal Circuit’s decision in DDR.
Appellants also argue the Examiner’s finding that the claims do not
improve functioning of a computer or effect an improvement in another
technological field is insufficient under the second step of the patent-
eligibility analysis because an advance in science and technology is not
required for patent-eligibility. Reply Br. 5—6; see also Appeal Br. 12—14.
Rather, Appellants contend that, at least for the process claims, the process
steps are the additional elements that transform the nature of the claims into
a patent-eligible application, and, as such, a determination under the second
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step turns on whether the claimed sequence of steps comprises only
conventional steps specified at a high level of generality. Id. at 6. Pursuant
to this standard, Appellants contend the Examiner has not provided any
evidence that the claimed steps are conventional, given the absence of
rejections under 35 U.S.C. §§ 102 and 103. Id. at 6—7. We disagree with
Appellants.
Here, the process steps are not the implementation of an abstract idea,
but rather the process steps are the abstract: idea, and are implemented via
computing components, e.g., a processor. Cf. Ariosa, 788 F.3d at 1377
(“For process claims that encompass natural phenomenon, the process steps
are the additional features that must be new and useful.”) (citing Parker v.
Flook, 98 S. Ct. 2522, 2526 (1978)). As such, the question in the second
step of the patent-eligibility analysis is not whether the process steps are
unconventional, but whether the computer implementation of the process
steps involves “more than the performance of ‘well-understood, routine,
[and] conventional activities previously known to the industry/” Content-
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass % 776 F.3d
1343, 1347-48 (quoting Alice, 134 S. Ct. at 2359).
In this regard, the Examiner finds the abstract idea is implemented on
a generic computer processor using routine data processing capabilities.
Final Act. 6-7. The Examiner also finds the claims do not represent any
improvement to the functionality of the computer processor (id. at 6), and
the claims do not include any meaningful limitations beyond generally
linking the use of the abstract idea to the computer processor (id. at 7).
Appellants do not challenge these findings and therefore do not apprise us of
error in the Examiner’s finding that the claims do not amount to significantly
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more than the abstract idea under the second step patent-
analysis.
In view of the foregoing, Appellants do not apprise us of error in the
Examiner’s determination that the claims are directed to non-statutory
subject matter. We, therefore, sustain the rejection of claims 1—20 under
35U.S.C. § 101.
DECISION
The Examiner’s decision to reject claims 1—20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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