Ex Parte Hightower et al

Patent Trial and Appeal Board

Jun 30, 2017

11065893 (P.T.A.B. Jun. 30, 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.
5226-002 6714
EXAMINER
JASMIN, LYNDA C
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
11/065,893 02/25/2005
24112 7590 06/30/2017
COATS & BENNETT, PLLC
1400 Crescent Green, Suite 300
Cary, NC 27518
Steven Hightower
06/30/2017 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN HIGHTOWER, WILLIAM D. BIGGS,
TIMOTHY FRAZER, PETER KRAUSE, and ERIC BIGGS
Appeal 2015-0064961
Application 11/065,8932
Technology Center 3600
Before MICHAEL C. ASTORINO, TARA L. HUTCHINGS, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—3, 8—13, 15, 16, 19-24, 27—29, and 70. We have
jurisdiction under 35 U.S.C. § 6(b).
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
November 20, 2014) and Reply Brief, (“Reply Br.,” filed June 23, 2015), the
Examiner’s Answer (“Ans.,” mailed April 23, 2015), and Final Office
Action (“Final Act.,” mailed June 3, 2014).
2 Appellants identify Terradatum, Inc. as the real party in interest (Appeal
Br. 2).
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We AFFIRM.
CLAIMED INVENTION
Appellants’ claims relate “to software products that provide statistical
analysis and display of real estate data to support improved and efficient
management of real estate businesses” (Spec. 12).
Claims 1 and 70 are the independent claims on appeal. Claim 1,
reproduced below with added bracketed notations, is illustrative of the
subject matter on appeal:
1. A method of mining and displaying data to support the
management of a real estate business having a hierarchical
management structure, the real estate business comprising a
plurality of real estate offices and an enterprise office managing
the plurality of real estate offices, comprising:
[a] periodically extracting real estate data from one or
more Multiple Listing Service (MLS) databases to a local,
machine-readable database;
[b] automatically aggregating, by a computer accessing
data from the local, machine-readable database, and not in
response to a query by a user, only said data that is associated
with properties listed or sold by said real estate business;
[c] displaying, to a manager in a first said real estate office,
data associated with properties listed or sold by said first real
estate office, in a first display comprising at least a first graph
and a first textual list; and
[d] displaying, to a manager in said enterprise office, said
data associated with properties listed or sold by said first real
estate office, in a second display substantially similar to said first
display and comprising at least said first graph and said first
textual list, and said second display additionally comprising a
real estate office grid displaying said plurality of real estate
offices; and
[e] in response to the enterprise office manager selecting a
second real estate office from said real estate office grid,
displaying to the manager in said enterprise office, data
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associated with properties listed or sold by said second real estate
office in a third display.
REJECTIONS
Claims 1—3, 8—13, 15, 16, 19-24, 27—29, and 70 are rejected as being
directed to non-statutory subject matter.3
Claims 1, 3, 8—13, 19-24, 27—29, and 70 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Apgar (US 5,680,305, iss. Oct. 21, 1997) and
Faudman (US 6,883,002 B2, iss. Apr. 19, 2005).
Claims 2, 15, and 16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Apgar, Faudman, and Official Notice.
ANALYSIS
Non-Statutory Subject Matter
Appellants argue claims 1—3, 8—13, 15, 16, 19-24, 27—29, and 70 as a
group (see Reply Br. 2—5). We select claim 1 as representative. Claims 2, 3,
8—13, 15, 16, 19—24, 27—29, and 70 stand or fall with independent claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv).
Alice Corp. Pty. Ltd. v. CLSBanklnt’l, 134 S. Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
3 The Examiner entered this rejection as a new ground in the Answer (see
Ans. 10).
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The “directed to” inquiry [jcannot simply ask whether the claims
involve a patent-ineligible concept, because essentially every
routinely patent-eligible claim involving physical products and
actions involves a law of nature and/or natural phenomenon—
after all, they take place in the physical world. See Mayo, 132 S.
Ct. at 1293 (“For all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or
abstract ideas.”) Rather, the “directed to” inquiry applies a stage-
one filter to claims, considered in light of the specification, based
on 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); see Genetic Techs. Ltd. v.
Merial L.L.C., 818 F.3d 1369, 1375 (Fed. Cir. 2016) (inquiring
into “the focus of the claimed advance over the prior art”).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). “The
‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.’” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citing Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); see also
Enfish, 822 F.3d at 1335.
In rejecting claims 1—3, 8—13, 15, 16, 19-24, 27—29, and 70, the
Examiner finds the claims are “directed to displaying selected information”
(Ans. 6), and when viewed as a whole, the claims do “not include additional
elements that are sufficient to finding them statutory” (id.).
Appellants argue that the Examiner errs in rejecting claims 1—3, 8—13,
15, 16, 19-24, 27—29, and 70 as directed to ineligible subject matter because
“the Examiner mischaracterized the claims as being ‘directed to displaying
selected information,’ and ‘not includ[ing] additional elements that are
sufficient to finding them statutory’” (Reply Br. 2). Instead, Appellants
argue
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claim 1 recites a number of steps performed by a computer,
including: periodically extracting real estate data from an MLS
database; automatically aggregating only data associated with
properties listed or sold by a real estate business; and displaying
this data to two different managers in two, hierarchically related
real estate offices, in specifically-recited formats.
(Id. ). We cannot agree.
According to the Specification, “[t]he present invention relates
generally to the field of software and in particular to software products that
provide statistical analysis and display of real estate data to support
improved and efficient management of real estate businesses” (Spec. 12).
The Specification identifies that “the real estate industry is among the oldest
of businesses to rely to a significant extent on an extensive, richly populated
database - the Multiple Listing Service (MLS)” (id. 14). The Specification
describes
[wjhile virtually all real estate businesses subscribe to the MLS,
and utilize the database in the day to day operation of the
business, MLS data is not utilized by real estate business
managers to generate strategic plans, set goals, define and track
measures of progress and business efficiency, evaluate
performance, and the like, of their own businesses. That is, real
estate businesses primarily utilize MLS to list their own
properties, and to discover and analyze properties listed by
others.
(Id. 1 5). In light of the industry’s wide-spread use of the MLS, the
Specification observes that “no prior art MLS data analysis systems or
methods utilize advanced data mining, statistical analysis and sophisticated
display views to provide powerful tools to facilitate and improve the
management of real estate businesses” (id. f 6). As such, the Specification
identifies “the present invention comprises an integrated software suite of ad
hoc data mining and analysis tools, incorporating a novel, intuitive display
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and user interface, to facilitate and improve the management of real estate
businesses” {id. 140).
Under step one of the framework set forth in Alice, we agree with the
Examiner that the invention is broadly “directed to displaying selected
information” (Ans. 6). In making this determination, we note that the steps
recited in independent claim 1 involve nothing more than extracting data,
aggregating data, and displaying data “on a terminal 14, such as a personal
computer” (see Spec. 1 66).
In this regard, we find the steps of independent claim 1 are similar to
the steps that the Federal Circuit determined were patent ineligible in
Electric Power Grp. LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). In
Electric Power, the method claims at issue were directed to performing real­
time performance monitoring of an electric power grid by collecting data
from multiple data sources, analyzing the data, and displaying the results.
Elec. Power Grp. LLC, 830 F.3d at 1351—52. The Federal Circuit held that
the claims were directed to an abstract idea, explaining that “[t]he advance
they purport to make is a process of gathering and analyzing information of
a specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions.” Elec.
Power Grp., 830 F.3d at 1354.
More recently, the concept of “using an electronic device to obtain
clinical trial data that would otherwise be collected by pen-and-paper diary,
and analyzing the data to decide whether to prompt action” was found to be
an abstract idea. eResearchTechnology, Inc. v. CRF, Inc., 186 F.Supp.3d
463, 473 (W.D.Pa. 2016), aff’d., No. 2016-2281, 2017 WF 1033672 (mem)
(Fed. Cir. Mar. 17, 2017) (citing OIP Techs., Inc. v. Amazon.com, Inc., 788
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F.3d 1359, 1361—62 (Fed. Cir. 2015)) (Finding a method comprising (1)
testing prices, (2) gathering statistics about how customers reacted to the
prices, (3) using that data to estimate outcomes, and (4) acting on estimated
outcomes (i.e., automatically selecting and offering new prices based on
estimated outcome) to be directed to the abstract idea of price optimization.);
see also Intellectual Ventures ILLC v. Erie Indent. Co., 2015 U.S. Dist.
LEXIS 129153, at *94 (finding a method of “gathering, storing, and acting
on data based on predetermined rules” to be directed to an abstract idea).
Accordingly, we find that independent claim 1 involves nothing more
than extracting data, aggregating data, and displaying data — activities
squarely within the realm of abstract ideas. See, e.g., Elec. Power Grp.,
LLC, 830 F.3d at 1353—54 (when “[t]he focus of the asserted claims” is “on
collecting information, analyzing it, and displaying certain results of the
collection and analysis,” the claims are directed to an abstract idea). See
also Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d
1336, 1344^45 (Fed. Cir. 2013) (claims reciting “generalized software
components arranged to implement an abstract concept [of generating
insurance-policy-related tasks based on rules to be completed upon the
occurrence of an event] on a computer” not patent eligible).
Step two is “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.’” Alice, 134 S. Ct. at 2355 (alteration in original) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)).
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And, similar to the situation in Electric Power, we find nothing
sufficient to remove the claims from the class of subject matter ineligible for
patenting. As the court explained in Electric Power, “merely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the information-based
category of abstract ideas.” Elec. Power Grp., 830 F.3d at 1355.
Furthermore, “periodically extracting . . . data,” as recited by limitation [a],
“automatically aggregating,” as recited by limitation [b], “displaying” data
in a first and second display, as recited by limitations [c] and [d], and
“displaying” data in a third display in response to a selection, as recited by
limitation [e], does not add inventiveness because it too requires the
application of conventional, well-known analytical steps. See Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (“[T]he claimed
sequence of steps comprises only ‘conventional steps, specified at a high
level of generality,’ which is insufficient to supply an ‘inventive concept.’”)
(Citing Alice, 134 S. Ct. at 2357) (internal citations omitted). And, there is
no indication in the record that any specialized computer hardware or other
“inventive” computer components are required. In fact, the Specification
discloses that the claimed invention operates on “a personal computer” (see
Spec. 1 66) and recognizes that there are “[sjervices known in the art [that]
extract data from the MLS” (id. 142).
We acknowledge that the Specification identifies that “[a] significant
feature of one or more embodiments is the ad-hoc availability of
information,” i.e., “the aggregation and analysis of data according to
embodiments of the present invention is performed on an ad hoc basis - at
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the user’s request” (id.). However, we find this “improvement” to be
directed to a business improvement rather than an improvement to a
technological or technical field. We also note that Appellants have not
provided evidence that the programming related to this “improvement”
would entail anything atypical from conventional programming. And, as the
Federal Circuit stated: “after Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible.” DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014).
Appellants further argue that the claims are not directed to an abstract
idea because they require “a specific, detailed display scheme, operative in
the limited business environment of hierarchically-managed real estate
offices, regarding data associated only with properties listed or sold by each
such real estate office,” and as such, “clearly does not seek to tie up any
judicial exception such that others cannot practice it” (Reply Br. 4—5).
Appellants’ argument is not persuasive.
Although the Supreme Court has described “the concern that drives
this exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of pre-emption,” Alice, 134 S. Ct. at 2354,
characterizing pre-emption as a driving concern for patent eligibility is not
the same as characterizing pre-emption as the sole test for patent eligibility.
“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). Although “preemption may signal
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patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” Id.
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 1, and claims 2, 3, 8—13, 15, 16, 19—
24, 27—29, and 70, which fall with independent claim 1.
Obviousness
Independent claim 1 and dependent claims 3, 8—13, 19—24, and 27—29
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because Apgar, upon
which the Examiner relies, fails to disclose or suggest “displaying, to a
manager in a first. . . office, data ... in a first display,” as recited by
limitation [c], “displaying, to a manager in said enterprise office, said
data ... in a second display substantially similar to said first display,” as
recited by limitation [d], and “in response to the enterprise office manager
selecting . . . displaying to the manager in said enterprise office, data ... in a
third display,” as recited by limitation [e] (see Appeal Br. 10—12; see also
Reply Br. 8).
The Examiner maintains the rejection is proper, and cites “at least
claim 20 in light of the appropriate definitions of real estate, customer etc.
show[n] in col[s]. 1—3 where real estate may be buildings of a business
entity or occupied),” as disclosing the argued limitations (Final Act. 7—\\ see
also Ans. 15—16).
Apgar is directed to a system “for evaluating real estate for purchase,
lease, and/or use by a business” (Apgar, col. 1,11. 40-42) and “efficiently
assisting businesses in making real estate decisions and in a manner which
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provides quantitative evaluation of factors associated with a prospective real
estate transaction” (id. at col. 1,11. 44-47). More particularly, Apgar
discloses that its system “produce[s] a [sjcore representing a quantitative
evaluation of the [r]eal [e]state” (id. at col. 3,11. 15—35). Apgar further
discloses that its system includes a “display means for outputting data and
analytical information about [a] [bjusiness [ejntity’s real estate” (id. at col.
31,11.31-34, claim 20).
The Examiner finds
[t]he purpose of the prior art is to allow customers to select their
businesses/listings and/or holdings for the presentation of
information related to the selected listing. It is submitted that the
prior art clearly teaches the management of multiple real estate
holdings. The management of which can be selectively chosen
for analysis. Further as discussed supra and acknowledged by
Applicant, these teachings are directed to all businesses
including real estate businesses.
(Ans. 16).
The difficulty with the Examiner’s analysis, as Appellants point out, is
that “Apgar does not remotely suggest such a detailed, coordinated, joint
display of any information,” as limitations [c], [d], and [e] set forth (see
Appeal Br. 10—11). Although we agree with the Examiner that Apgar
discloses the “management of multiple real estate holdings” (Ans. 16), we
cannot agree with the Examiner that “the claims merely require that the
customer be able to select another business entity to display information
related to that entity” (see Ans. 16). Instead, independent claim 1 requires
“displaying, to a manager in a first. . . office, data ... in a first display,” as
recited by limitation [c], “displaying, to a manager in said enterprise office,
said data ... in a second display substantially similar to said first display,”
as recited by limitation [d], and “in response to the enterprise office manager
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selecting . . . displaying to the manager in said enterprise office, data ... in a
third display,” as recited by limitation [e]. The addition of Faudman fails to
cure this deficiency.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner’s rejection of dependent claims 3, 8—13,
19-24, and 27-29.
Independent claim 70
Independent claim 70 includes limitations substantially similar to
independent claim l’s limitation discussed above. Therefore, we do not
sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of independent
claim 70 for the same reasons set forth above with respect to independent
claim 1.
Dependent claims 2, 15, and 16
Claims 2, 15, and 16 depend from independent claim 1. The
Examiner’s rejection of claims 2, 15, and 16 under 35 U.S.C. § 103(a) based
on Official Notice, in combination with Apgar and Faudman, does not cure
the deficiency in the Examiner’s rejection of independent claim 1.
Therefore, we do not sustain the Examiner’s rejection of claims 2, 15, and
16 under 35 U.S.C. § 103(a) for the same reasons set forth above with
respect to the independent claims.
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DECISION
The Examiner’s rejection of claims 1—3, 8—13, 15, 16, 19—24, 27—29,
and 70 under 35 U.S.C. § 101 is affirmed.
The Examiner’s rejections of claims 1—3, 8—13, 15, 16, 19-24, 27—29,
and 70 under 35 U.S.C. § 103(a) are reversed.
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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