Ex Parte Leuer et al

Patent Trial and Appeal Board

Feb 28, 2019

14214694 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/214,694 03/15/2014 Jennifer Leu er
30554 7590 03/04/2019
MAHAMEDI IP LAW LLP
910 Campisi Way, Suite IE
Suite 600
Campbell, CA 95008
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.
AUCT.P024 9726
EXAMINER
TIBLJAS, SHACOLE C
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
03/04/2019 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):
uspto@m-iplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENNIFER LEUER and JOHN HOOD 1
Appeal 2017-011221
Application 14/214,694
Technology Center 3600
Before JAMES R. HUGHES, JENIFFER S. BISK, and
LINZY T. McCARTNEY, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1---6, 8-14, and 16-20. Claims 7 and
15 have been canceled. Final Act. 1-2; Appeal Br. 3. 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 Ten-X, LLC ("Appellant") is the applicant as provided in 37 C.F.R. § 1.46
and is identified as the real party in interest. Appeal Br. 3.
2 We refer to Appellant's Specification ("Spec.") filed Mar. 15, 2014
(claiming benefit of 61/800,658 filed Mar. 15, 2013); Appeal Brief ("Appeal
Br.") filed Mar. 21, 2017; and Reply Brief ("Reply Br.") filed Aug. 29,
2017. We also refer to the Examiner's Final Office Action ("Final Act.")
mailed May 20, 2016; and Answer ("Ans.") mailed June 29, 2017.
Appeal 2017-011221
Application 14/214, 694
Appellant's Invention
The invention relates generally "to a system and method for managing
workflow for closing a real property asset transaction through use of
computing devices" (Spec. ,r 2). See Spec. ,r,r 3, 10-12, 15, 16, 20-26, 30-
32, 35-37, 39, 40, 42--44; Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A computer-implemented method for managing
closing of a real property asset transaction, the method being
implemented by one or more processors and comprising:
implementing, through network communications to
computing devices used by multiple parties of the real property
asset transaction, a dynamic workflow to manage tasks that are
to be performed in connection with closing the real property asset
transaction in which at least a portion of the workflow is
determined after the workflow is initiated based on an occurrence
of one or more contingencies, by:
identifying parties involved in completing the
transaction, the identified parties including at least a buyer and a
seller;
providing a scheduling interface to enable at least
one of the identified parties to identify and schedule closing
actions that are to be completed as part of the dynamic workflow
for closing the real property asset transaction, each of the closing
actions including one or more tasks that are to be performed by
at least one of the identified parties of the transaction, wherein
the scheduling interface determines a timeline for completing the
dynamic workflow;
monitoring for each of the identified parties of the
transaction to perform the one or more tasks of each of the
closing actions;
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providing a party interface to indicate a status of
each of the one or more tasks of each of the closing actions, the
one or more tasks including generating documents for execution
by one or more of the identified parties of the transaction;
determining a change to the timeline of the dynamic
workflow as a result of the one or more contingencies, the one or
more contingencies resulting in newly identified parties to
perform the one or more tasks;
adjusting a closing date for closing of the real
property asset transaction in response to the one or more
contingencies; and
automatically notifying, through the network
communications, each identified party of the change in the
time line.
Rejections on Appeal
1. The Examiner rejects claim 1 under pre-AIA 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. See Final Act. 3.
2. The Examiner rejects claims 1---6, 8-14, and 16-20 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. See
Final Act. 3--4.
3. The Examiner rejects claims 1---6, 8-14, and 16-20 under pre-
AIA 35 U.S.C. § I03(a) as being unpatentable over Petito et al. (US
7,707,153 Bl, issued Apr. 27, 2010) ("Petito") and Baca (US 2014/0143129
Al, published May 22, 2014 (claiming benefit of US 61/721,357, filed Nov.
1, 2012)). See Final Act. 6-9.
ISSUES
Based upon our review of the record, Appellant's contentions, and the
Examiner's findings and conclusions, the issues before us follow:
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1. Did the Examiner err in concluding Appellant's claim 1 failed
to comply with the written description requirement?
2. Did the Examiner err in finding Appellant's claims were
directed to patent-ineligible subject matter under 35 U.S.C. § 101?
3. Did the Examiner err in determining that the combination of
Petito and Baca would have collectively taught or suggested "determining a
change to the timeline of the dynamic workflow as a result of the one or
more contingencies" and "adjusting a closing date for closing of the real
property asset transaction in response to the one or more contingencies"
within the meaning of Appellant's claim 1 and the commensurate limitations
of claims 9 and 1 7?
ANALYSIS
Patent-Ineligible Subject Matter Rejection
The Examiner rejects claims 1---6, 8-14, and 16-20 as a group based
on claim 1 (see Final Act. 3--4) and concludes claim 1 is directed to patent-
ineligible subject matter in that claim 1 is "directed to managing closing of a
real property asset transaction which is a method of organizing human
activity." Final Act 4 (quotations omitted). The Examiner also concludes:
The additional element(s) (e.g. computing device, one or
more processors, scheduling interface, and communications
network) or combination of elements in the claim(s) other than
the abstract idea per se amount(s) to no more than: (i) mere
instructions to implement the idea on a computer, and/or (ii)
recitation of generic computer structure that serves to perform
generic computer functions that are well-understood, routine,
and conventional activities previously known to the pertinent
industry. Viewed as a whole, these additional claim element( s)
do not provide meaningful limitation(s) to transform the abstract
idea into a patent eligible application of the abstract idea such
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that the claim( s) amount to significantly more than the abstract
idea itself.
Final Act. 4. The Examiner expands on these findings and conclusions in
the Examiner's Answer. See Ans. 2--4.
Appellant contends the Examiner erred in rejecting the claims as
being directed to patent-ineligible subject matter. See Appeal Br. 8-18;
Reply Br. 3--4. Specifically, Appellant contends "the Examiner's rejection is
unsupported by analysis or argument" (Appeal Br. 9; see Appeal Br. 9-10;
Reply Br. 3); "the Examiner oversimplifies the claims and ignores large
portions of the claim language" (Appeal Br. 10; see Appeal Br. 10-11;
Reply Br. 3); "the pending claims raise no preemption issues" (Appeal Br.
11; see Appeal Br. 11-12; Reply Br. 3); "claim 1 is rooted in technology and
represents a technological improvement over conventional systems or
approaches" (Appeal Br. 12; see Appeal Br. 12-13; Reply Br. 3--4); "the
Office Action fails to establish that claim 1 does not amount to 'significantly
more' than an abstract idea" (Appeal Br. 13) and "the claim limitations are
unconventional and non-generic, and embody patentable inventive concepts"
(Appeal Br. 15; see Appeal Br. 13-16; Reply Br. 4). Appellant also
contends "claim 1 recites a specific and discrete implementation that
requires the implementation of a 'dynamic workflow['] to manage tasks and
the use of a 'scheduling interface' and a 'party interface."' Appeal Br. 15;
see Appeal Br. 13-16; Reply Br. 4.
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable Alice Corp. Pty.
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Ltd. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 77-80 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 573 U.S. at
21 7. Assuming that a claim nominally falls within one of the statutory
categories of machine, manufacture, process, or composition of matter, the
first step in the analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts" (id.), e.g., to an abstract
idea. 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. Kappas, 561 U.S. 593, 611
(2010) ("Claims 1 and 4 in petitioners' application explain the basic concept
of hedging, or protecting against risk."). Concepts determined to be abstract
ideas, and thus patent ineligible include, but are not limited to, 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 (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)).
If the claims are not directed to an abstract idea, the inquiry ends.
Otherwise, the inquiry proceeds to the second step of the Alice and Mayo
framework where the elements of the claims are considered "individually
and 'as an ordered combination' to determine whether the additional
elements 'transform the nature of the claim' into a patent-eligible
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application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78-79).
This second step is described as "a search for an 'inventive concept'-i.e.,
an element or combination of elements that is ' ... significantly more than
... the [ineligible concept] itself."' Id. at 217-218 ( alteration in original)
(quoting Mayo, 566 U.S. at 72-73). "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]."' Alice, 573 U.S.
at 221 ( 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 Court acknowledged in Mayo that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "2019 Revised Guidance").
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) (hereinafter "Step 2A, prong 1 "); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h))
(hereinafter "Step 2A, prong 2").
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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
§ 106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception. 3
See 2019 Revised Guidance.
Eligibility Analysis-Revised Guidance Steps 1 and 2A, Prong 1
Turning to the first step of the eligibility analysis, "the first step in the
Alice inquiry ... asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an 'abstract idea' for which computers are invoked merely
as a tool." Enfzsh, 822 F.3d at 1335-36. "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v.
Morse, 56 U.S. (15 How.) 62, 113 (1853)).
The Examiner determines independent claim 1 is directed to the
abstract idea of "managing closing of a real property asset transaction which
is a method of organizing human activity" (Final Act. 4 ( quotations
omitted); see Final Act. 3--4; Ans. 2-3), similar to cases involving
"managing an insurance policy" and "managing a game of bingo." See Final
3 Items (3) and (4) are collectively referred to as "Step 2B" hereinafter and
in the 2019 Revised Guidance.
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Act. 4. Here, in rejecting the claims (in particular claim 1) under 35 U.S.C.
§ 101, the Examiner analyzed the claims using the Mayo/Alice two-step
framework, consistent with the guidance set forth in the USPTO's "2014
Interim Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74618
(Dec. 16, 2014), in effect at the time the rejection was made, i.e., on May 20,
2016. We agree with the Examiner that Appellant's claim 1 (and the other
pending claims) are directed to patent-ineligible abstract ideas or concepts.
In view of the 2019 Revised Guidance, we clarify and expand the
Examiner's reasoning as follows.
We begin our analysis by broadly but reasonably construing
Appellant's claim 1. Claim 1 recites a computer implemented transaction
processing method for "managing closing of a real property asset
transaction" "implemented [ using] one or more processors" ( claim 1; see
Spec. ,r 2). Initially, the claim describes a computer implemented real
property transaction processing method including the step of implementing a
dynamic workflow-i.e., a dynamic transaction process4-to manage tasks
(to be performed in the transaction process) where a portion of the process
(workflow) is determined after the process (workflow) is initiated based on
the occurrence of contingencies.
Implementing the dynamic transaction process (workflow) further
includes: "identifying parties involved in completing the transaction ...
including at least a buyer and a seller" ( claim 1) and "providing a scheduling
4 Workflow is not explicitly defined by Appellant in the Specification. We
find a "workflow" means a "[p ]rogression of steps ... that comprise a work
process." BusinessDictionary.com ( www.businessdictionary.com/ definition/
workflow.html), updated Jan. 27, 2010, last accessed Feb. 19, 2019.
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interface" enabling one or more of the identified parties to "identify and
schedule closing actions" that are part of the dynamic transaction process
(workflow), where "each of the closing actions" includes "one or more tasks
... to be performed by at least one of the identified parties," and wherein
"the scheduling interface determines a timeline for completing" the dynamic
transaction process (workflow) ( claim 1; see Spec. ,r,r 24--26). That is,
implementing the dynamic transaction process (workflow) includes
identifying parties involved in the transaction (including a buyer and a
seller) as well as identifying and scheduling "closing actions" including "one
or more tasks"----or simply tasks (see preamble, supra }-to be performed by
the identified parties utilizing a scheduling interface, wherein the scheduling
interface determines a timeline for completing the transaction process based
on the identified actions/tasks.
Claim 1 also recites "monitoring for each of the identified parties ...
to perform the ... tasks" and "providing a party interface" that indicates "a
status of each of the ... tasks ... including generating documents for
execution by one or more of the identified parties" ( claim 1; see Spec. ,r,r 21,
24--26, 39, 40). That is, implementing the dynamic transaction process
( workflow) also includes monitoring the transaction process to determine
performance of tasks by one of the identified parties and providing an
additional interface ( a party interface) capable of showing a status of each of
the tasks. The tasks may include generating documents to be executed by
the identified parties.
Claim 1 additionally recites "determining a change to the timeline" of
the dynamic transaction process (workflow) "as a result of the one or more
contingencies ... resulting in newly identified parties to perform the one or
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more tasks," "adjusting a closing date ... in response to the one or more
contingencies," and "automatically notifying ... each identified party of the
change in the timeline" (claim 1; see Spec. ,r,r 22-24, 35-37, 42--44). That
is, implementing the dynamic transaction process (workflow) also includes
determining a change to the timeline based on the occurrence at least one
contingency, where the occurrence of the contingency results in a newly
identified party responsible for performing one of the tasks (in the
process/timeline ), adjusting the timeline responsive to the occurrence of the
contingency, and notifying the parties of the timeline changes.
Claim 1 also includes additional features (elements) that are
appurtenant to the dynamic transaction process (workflow) and do not
further limit the recited process. These elements include: a processor or
processors, network communications, computing devices, as well as the
physical components and/or graphical arrangement of the interfaces
( scheduling interface and party interface). Appellant's Specification does
not define these additional elements or explain in any detail the structure of
the elements.
In each instance the above-identified additional elements consist of
structural elements that, while necessary to perform the functionality of the
transaction processing method, do not limit how the functionality is actually
performed. For example, the recited "scheduling interface" is described in
the Specification as a scheduling module (software) that generates various
information (required actions, responsible parties, deadlines, etc.) to create a
workflow (transaction process) (see Spec. ,r,r 24--26) that may be displayed
in a graphical user interface (GUI) (see Spec. ,r 26). Claim 1 recites the
"scheduling interface" as capable of enabling ("to enable") "at least one of
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the identified parties to identify and schedule closing actions that are to be
completed as part of the dynamic workflow" and "the scheduling interface"
determining "a timeline for completing the dynamic workflow" ( claim 1 ).
The transaction processing method recites "a scheduling interface" that
enables an identified party "to identify and schedule" closing actions and
tasks. The claim does not recite the scheduling interface affirmatively
performing this functionality. Rather the claim merely recites the intended
purpose of the scheduling interface-to allow a user to identify and schedule
tasks/actions. Based on the user's input, the scheduling interface (the
scheduling module and GUI) determine a timeline utilizing undisclosed
processes and/or algorithms.
In summary, claim 1 recites a computer implemented transaction
processing method for managing closing of a real property asset transaction,
including the steps of: implementing the transaction process, which is
dynamic, to manage tasks (to be performed in the transaction process) where
a portion of the process is determined after the process is initiated based on
the occurrence of contingencies; identifying parties involved in the
transaction (including a buyer and a seller) as well as identifying and
scheduling actions and tasks to be performed by the identified parties
utilizing a scheduling interface, the scheduling interface determining a
timeline for the transaction process based on the identified and scheduled
actions/tasks; monitoring the transaction process to determine performance
of tasks by one of the identified parties; providing a party interface capable
of displaying a status of tasks (where the tasks may include generating
documents to be executed by the identified parties); determining a change to
the timeline based on the occurrence at least one contingency, where the
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occurrence of the contingency results in a newly identified party responsible
for performing one of the tasks (in the process/timeline ); adjusting the
timeline responsive to the occurrence of the contingency; and notifying the
parties of the timeline changes. Hereinafter, we refer to this method as the
"transaction processing method" or "method for managing the real estate
transaction process."
We find that the claim recites a method (process) which is a statutory
category of invention (subject matter) (USPTO's Step 1). Utilizing our
interpretation of claim 1 (supra), we analyze whether the claim is directed to
an abstract idea (USPTO's Step 2A). Here, Appellant's claims generally,
and independent claim 1 in particular ( as summarized, supra), relate to
managing the transaction process for a real property asset transaction. This
is consistent with how Appellant describes the claimed invention. See Spec.
2-3; Appeal Br. 3-5 (citing Spec. ,r,r 10-12, 15, 16, 20-26, 30-32, 35-37,
39, 40, 42--44; Figs. 1--4).
Appellant's claim 1 recites a judicial exception (USPTO's Step 2A,
Prong 1; see 2019 Revised Guidance). The transaction processing method is
a method of organizing human activity, in particular, a fundamental
economic practice.
Transaction processing is a well-known business practice that is not
patent eligible. See Smart Sys. Innovations, LLC v. Chicago Transit Auth.,
873 F.3d 1364, 1371-72 (Fed. Cir. 2017) ("Taken together, the Asserted
Claims are directed to the formation of financial transactions in a particular
field ... and data collection related to such transactions," which is "an
abstract idea under Alice step one."); Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat'! Ass'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
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(summarizing precedent in which "claims directed to the performance of
certain financial transactions" involve abstract ideas and holding that claims
drawn to the abstract concept of financial transaction-related "data
collection, recognition, and storage is undisputedly well-known.").
Similarly, claims utilizing computers to automate business practices
involving real estate or real property have been found to be directed to
patent-ineligible abstract concepts. See Fort Properties., Inc. v. American.
Master Lease LLC, 671 F.3d 1317, 1322-23 (Fed. Cir. 2012) (The claims
"recite an abstract real estate investment tool. When viewing the claimed
invention as a whole, the physical activities involving the deeds, contracts,
and real property are insufficient to render these claims patentable." Id. at
1323.).
Further, utilizing computers to perform scheduling and task
management has been found to be abstract. In Accenture Global Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir.
2013), the Federal Circuit found the claims merely recited "generalized
software components arranged to implement an abstract concept on a
computer" (id. at 1345) the abstract concept being "generating tasks [based
on] rules ... to be completed upon the occurrence of an event" (id. at 1344).
Our conclusion, that the transaction processing method is a method of
organizing human activity, or more particularly, a fundamental economic
practice, is supported by the similarities between Appellant's claim 1 and the
claims in precedent cases that "simply use computers to serve a conventional
business purpose." Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1261 (Fed. Cir. 2016); see Alice, 573 U.S. at 219 (concluding that
concept of intermediated settlement was "a fundamental economic practice
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long prevalent in our system of commerce" and thus an abstract idea). As
explained by the Federal Circuit, the claims at issue in Affinity Labs were not
"directed to how to implement" the abstract concept ( out-of-region
broadcasting on a cellular telephone), but claimed the function itself instead
of a particular way to perform the function. Affinity Labs, 838 F.3d at 1258.
Claim 1 is no different. It broadly recites the commercial practice of
managing the transaction process for a real property asset transaction. While
the claim limitations provide steps for using the computer to perform the
process, and interfaces for identifying, scheduling and displaying tasks,
parties, deadlines, and progress, the limitations contain no technical details
or explanation of how to implement the claimed abstract idea using the
computer. Absent such a disclosure, we cannot conclude that claim 1 covers
anything more than the use of a computer for a conventional business
purpose. See Affinity Labs, 838 F.3d at 1261.
Eligibility Analysis-Revised Guidance Step 2A, Prong 2
Appellant's claim 1 also recites additional elements beyond the
abstract method of managing the real estate transaction process ( transaction
processing method) (the judicial exception) (supra). These elements
include, as previously discussed (supra): processors, network
communications, computing devices, and interfaces (scheduling interface
and party interface).
We evaluate these additional elements to determine whether the
additional elements integrate the method of managing the real estate
transaction process (the judicial exception) into a practical application of the
exception (USPTO's Step 2A, Prong 2; see 2019 Revised Guidance).
Appellant contends (supra) that the claims are "rooted in technology and
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represents a technological improvement over conventional systems or
approaches" (Appeal Br. 12; see Appeal Br. 12-13; Reply Br. 3--4) and
recite "a specific and discrete implementation ... of a 'dynamic workflow[']
to manage tasks" (Appeal Br. 15; see Appeal Br. 13-16; Reply Br. 4),
similar to DDR Holdings (DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014)) and Bascom (Bascom Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)). In other words,
Appellant contends the claims recite meaningful limitations that sufficiently
limit the practical application of the alleged abstract idea. We disagree.
Appellant's additional elements (or the combination of the additional
elements) do not apply or use the transaction processing method (the judicial
exception) in a manner that imposes a meaningful limit on the judicial
exception, such that it is more than a drafting effort designed to monopolize
the exception. See Alice, 573 U.S. at 221-24 (citing Mayo, 566 U.S. at 78-
85). Rather, Appellant's claims recite computers (the processors, network
communications, computing devices, and interfaces) that are utilized as tools
to perform transaction processing method (the abstract idea). Utilizing a
computer as a tool to perform the abstract idea does not impose a meaningful
limit on the abstract idea. See MPEP § 2106.05([); see also Alice, 573 U.S.
at 223 ("if [the] recitation of a computer amounts to a mere instruction to
implement an abstract idea on a computer that addition cannot impart patent
eligibility" ( quotations and internal citations omitted)).
Appellant's claims can be distinguished from patent-eligible claims
such as those in McRO, Enfish, Bascom, and DDR Holdings that are directed
to "a specific means or method that improves the relevant technology"
(McRO, 837 F.3d at 1314), or "a specific improvement to the way computers
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operate" (Enfzsh, 822 F.3d at 1336), solving a technology-based problem
(BASCOM, 827 F.3d at 1349--52), or a method "rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer [technology]" (DDR Holdings, 773 F.3d at 1257). Contrary to
Appellant's arguments, claim 1 is not a specific technological improvement
or an improvement in a technology. Appellant's claim 1 does not "improve
the functioning of the computer itself' or "any other technology or technical
field." Alice, 573 U.S. at 225. Nor, does it provide a technological solution
to a technological problem. See DDR Holdings, 773 F.3d at 1257. See
MPEP § 2106.05(a). Rather, Appellant's claims and, in particular, the
above-identified additional elements are similar to the claims in Alice (see
Alice, 573 U.S. at 225-26) and Versata Dev. Group, Inc. v. SAP Am., Inc.,
793 F.3d 1306, 1333-34 (Fed. Cir. 2015) in that the instant claims
implement a known business practice utilizing a general purpose computer.
In summary, "the focus of the claims is not on such an improvement
in computers as tools, but on certain independently abstract ideas that use
computers as tools." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
13 54 (Fed. Cir. 2016). Thus, we agree with the Examiner that the claims are
directed to the abstract idea of performing "a series of steps for a travel-
related financial transaction, which are a fundamental economic practice"
(Final Act. 2), or as we clarify (supra) performing a transaction approval
process utilizing a generic computer.
Eligibility Analysis-Step 2B ("Significantly More")
Having concluded Appellant's claims are directed to an abstract idea
under the 2019 Revised Guidance Step 2A analysis, we next address
whether the claims add significantly more to the alleged abstract idea. As
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directed by our reviewing court, we search for an "'inventive concept'
sufficient to 'transform the nature of the claim into a patent-eligible
application."' McRO, 837 F.3d at 1312 ( quoting Alice, 573 U.S. at 217).
The implementation of the abstract idea involved must be "more than
performance of 'well-understood, routine, [and] conventional activities
previously known to the industry."' Content Extraction, 776 F.3d at 1347-
48 (alteration in original) ( quoting Alice, 573 U.S. at 225). The "inventive
concept" "must be significantly more than the abstract idea itself, and cannot
simply be an instruction to implement or apply the abstract idea on a
computer." Bascom, 827 F.3d at 1349 (citation omitted).
Here, the Examiner determined that Appellant's claims do not add
significantly more:
The additional element(s) (e.g. computing device, one or
more processors, scheduling interface, and communications
network) or combination of elements in the claim(s) other than
the abstract idea per se amount(s) to no more than: (i) mere
instructions to implement the idea on a computer, and/or (ii)
recitation of generic computer structure that serves to perform
generic computer functions that are well-understood, routine,
and conventional activities previously known to the pertinent
industry. Viewed as a whole, these additional claim element( s)
do not provide meaningful limitation(s) to transform the abstract
idea into a patent eligible application of the abstract idea such
that the claim( s) amount to significantly more than the abstract
idea itself.
Final Act. 4; see Ans. 2--4. Appellant contends the claims constitute
"'significantly more' than the alleged abstract idea" (Appeal Br. 15) and
reiterate claim 1, explaining:
[C]laim 1 recites a specific and discrete implementation that
requires the implementation of a "dynamic workflow to manage
tasks and the use of a 'scheduling interface' and a 'party
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interface."' In addition, claim 1 requires non-generic steps of
"monitoring for each of the identified parties of the transaction
to perform the one or more tasks of each of the closing actions,"
"determining a change to the timeline of the dynamic workflow
as a result of the one or more contingencies, the one or more
contingencies resulting in newly identified parties to perform the
one or more tasks," "adjusting a closing date for closing of the
real property asset transaction in response to the one or more
contingencies," and "automatically notifying, through the
network communications, each identified party of the change in
the timeline."
Appeal Br. 15; see Appeal Br. 13-16; Reply Br. 4. Appellant fails to
persuade us of error in the Examiner's rejection with respect to the second
Alice step. We agree with the Examiner that Appellant's claim 1 (and the
other pending claims) does not evince an "inventive concept" that is
significantly more than the abstract idea itself. In particular, Appellant fails
to explain how the limitations (above) are not part and parcel of the abstract
business practice-method for managing the real estate transaction process
(transaction processing method). Nor does Appellant explain how the
additional features (additional elements, see supra) (individually and in
combination) are not routine or are unconventional.
As previously discussed, claim 1 merely recites additional non-
abstract elements ( above }-specifically computers (processors, network
communications, computing devices, and interfaces), and utilizing
computers, processors, networks, and interfaces ( conventional computers
and conventional computer processes) to receive, analyze, and display
information, and to generate real estate transaction process information.
Appellant's Specification describes the computers as conventional (generic)
computers. See, e.g., Spec. ,r,r 17, 18 ("[O]ne or more examples described
herein may be implemented, in whole or in part, on computing devices such
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as servers, desktop computers, cellular or smartphones, personal digital
assistants ( e.g., PD As), laptop computers, ... network equipment ( e.g.,
routers) and tablet devices" (i-f 17). "[T]he numerous machines shown with
examples of the invention include processor( s) and various forms of memory
for holding data and instructions." "Computers, terminals, network enabled
devices (e.g., mobile devices, such as cell phones) are all examples of
machines and devices that utilize processors, memory, and instructions
stored on computer-readable mediums. Additionally, examples may be
implemented in the form of computer-programs" (i-f 18)).
Accordingly, Appellant's Specification itself describes the additional
elements as being well-understood, routine, and conventional. Such
conventional computer processes operating on conventional computer
hardware "do not alone transform an otherwise abstract idea into patent-
eligible subject matter." FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1096 (Fed. Cir. 2016)(citing DDR Holdings, 773 F.3d at 1256).
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
Examiner's rejection under§ 101 of independent claim 1, independent
claims 9 and 17, and dependent claims 2---6, 8, 10-14, 16, and 18-20, which
were not separately argued with specificity.
Obviousness Rejection of Claims 1-6, 8-14, and 16-20
The Examiner rejects independent claim 1 (as well as independent
claims 9 and 17, and dependent claims 2-6, 8, 10-14, 16, and 18-20) as
obvious in view of Petito and Baca. See Final Act. 5-7; see also Final Act.
7-9; Ans. 4--5. The Examiner finds that Petito describes a workflow
management system for automating a real estate closing process and "a
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closing officer [putting] the closing 'on hold' until [certain] conditions are
met" (Ans. 4). See Final Act. 5-7; Ans. 4--5 (citing Petito col. 9, 11. 41-62;
col. 24, 1. 60-col. 25, 1. 6). The Examiner further finds Baca describes a
scheduling interface determining a timeline and adjusting a closing date for a
real property transaction responsive to contingencies. See Final Act. 7; Ans.
4--5 (citing Baca ,r 78).
Appellant contends that the combination of Petito and Baca does not
teach the disputed features of claim 1. See Appeal Br. 16-19; Reply Br. 5-
6. Specifically, Appellant contends, inter alia, that the combination of Petito
and Baca does not teach the limitation of "determining a change to the
timeline ... as a result of the one or more contingencies" ( claim 1) or the
limitation of "adjusting a closing date ... of the real property asset
transaction in response to the one or more contingencies" ( claim 1 ). See
Appeal Br. 17-19; Reply Br. 5---6.
We agree with Appellant that the Examiner does not explain
sufficiently how the cited portions of Petito and Baca describe the disputed
features. The Examiner cited portions of Petito merely describe, in general
terms, a person (closing officer) putting a closing on hold (see supra}--not a
processor managing the closing process of a real property transaction
utilizing a scheduling interface to determine a timeline and determine "a
change to the timeline" "as a result of ... contingencies" ( claim 1 ). The
Examiner cited portions of Baca are similarly deficient. The cited portions
of Baca merely describe prompting a user to adjust a closing date based on
conflicts (see supra}--not utilizing an interface to "adjusting a closing date .
. . in response to the one or more contingencies" ( claim 1 ). See Appeal Br.
17-19; Reply Br. 5---6.
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Without further explanation, we are left to speculate on how Petito in
combination with Baca teaches the disputed features of claim 1.
Consequently, we are constrained by the record before us to find that the
Examiner erred in concluding the combination of Petito and Baca renders
obvious Appellant's claim 1. Independent claims 9 and 17 include
limitations of commensurate scope. Dependent claims 2---6, 8, 10-14, 16,
and 18-20 depend from and stand with claims 1, 9 and 17, respectively.
Accordingly, we do not sustain the Examiner's obviousness rejection of
claims 1---6, 8-14, and 16-20.
The Written Description Rejection
The Examiner rejects independent claim 1 as as failing to comply with
the written description requirement. See Final Act. 3; Ans. 5. Appellant
contends that the disputed features-"at least a portion of the workflow is
determined after the workflow is initiated based on an occurrence of one or
more contingencies" and "the one or more contingencies resulting in newly
identified parties to perform the one or more tasks" ( claim 1 }-are supported
by the Specification. See Appeal Br. 19-21; Reply Br. 6-7.
The test for sufficiency under the written description requirement "is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date." Ariad Pharmaceuticals, Inc. v. Eli Lilly
and Company, 598 F.3d 1336, 1351 (Fed. Cir. 2010).
The Examiner finds the subject matter of independent claim 1, which
involves determining a portion of a workflow (process) after a dynamic
workflow (process) has already (initially) been determined/initiated/
implemented, is not described in sufficient detail in the Specification to
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show possession. See Ans. 5. Appellant contends proper written description
support for the claims can be found in paragraphs 24, 26, 37, 42, and 44 of
the Specification, as well as Figure 2. See Appeal Br. 19--21. We agree with
Appellant.
Appellants' cited paragraphs describe regenerating a workflow based
on the occurrence of a contingent event (see Spec. ,r 26; Reply Br. 6-7) and
contingencies resulting in newly identified parties ( dynamically populating a
party list as each party is identified) (see Spec. ,r 42; Reply Br. 7). We find
the above-described subject matter from Appellant's Specification provides
sufficient written description support for the claimed features the Examiner
found lacking in such support. In particular, the above description shows
Appellant had possession of a system that regenerates a workflow based on
contingent events and dynamically populates a party list ( a system that is
capable of identifying new parties based on the contingent events), as recited
in claim 1.
We, therefore, find the Examiner erred in rejecting independent claim
1 as lacking sufficient written description support.
CONCLUSION
Appellant has not shown that the Examiner erred in rejecting claims
1-6, 8-14, and 16-20 under 35 U.S.C. § 101.
Appellant has shown that the Examiner erred in rejecting claims 1---6,
8-14, and 16-20 under 35 U.S.C. § 103(a).
Appellant has shown that the Examiner erred in rejecting claim 1
under 35 U.S.C. § 112, first paragraph.
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DECISION
We affirm the Examiner's rejection of claims 1-6, 8-14, and 16-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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