Ex Parte SERIO

Patent Trial and Appeal Board

Jul 30, 2018

12904713 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/904,713 10/14/2010
154930 7590
XSENSUS LLP
200 Daingerfield Road
Suite 201
Alexandria, VA 22314
08/01/2018
FIRST NAMED INVENTOR
Dianna Lee SERIO
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.
10034US04CON 6488
EXAMINER
NGUYEN, THUY-VI THI
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
anaquadocketing@Xsensus.com
Arlene.Hudgens@Xsensus.com
Faith.Baggett@xsensus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIANNA LEE SERI0 1
Appeal2017-000962
Application 12/904,713
Technology Center 3800
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellant, the real party in interest is CORELOGIC
SOLUTIONS, LLC. Appeal Br. 2.
Appeal2017-000962
Application 12/904,713
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 11-17 and 19-26. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b ).
BACKGROUND
Appellant's invention is directed to system and method for monitoring
events associated with a person or property. Spec. 1.
Claim 11 is illustrative:
11. A non-transitory computer storage medium having instructions
that when executed by a computer perform a method of monitoring lien
activity recorded against real property, the method comprising:
storing information pertaining to the real property in a database;
receiving a request from a subscriber to monitor for recorded lien
activity, the request including a property identifier associated with the real
property, the request including a request for reporting a transaction
associated with lien activity for the real property, the lien activity defined by
a plurality of lien-related criterion;
iteratively monitoring the database with a processor for a presence of
the transaction associated with lien activity for the real property; and
transmitting a notification to a device when the transaction associated
with the lien activity is detected, wherein the lien activity is one of a tax lien,
and a recorded real property financing document.
The Examiner relies on the following prior art reference as evidence
of unpatentability:
Chapman
Sealand
Morris
US 2002/0169747 Al
US 6,484,176 Bl
us 2008/0281648
Appellant appeals the following rejection:
2
Nov. 14, 2002
Nov. 19, 2002
Nov. 13, 2008
Appeal2017-000962
Application 12/904,713
Claims 11-17 and 19-26 are rejected under 35 U.S.C. § 101 because
the claimed invention is directed to a judicial exception.
Claim 11 is rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicant regards as the invention.
Claims 11 and 19-22 are rejected under 35 U.S.C. § 103 as being
unpatentable over Chapman, in view of Sealand, and in view of Morris.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S.Ct. 2347,
2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 ("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."); 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."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
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respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--595 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. CyberSource
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Application 12/904,713
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) (holding that "collecting information, analyzing it, and displaying
certain results of the collection and analysis" are "a familiar class of claims
'directed to' a patent ineligible concept"); see also In re TL! Comm 's LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016).
ANALYSIS
Re} ection under 3 5 US. C. § 101
The Examiner holds that the claims are directed to the abstract idea of
lien monitoring. Final Act. 8. The Examiner also determines that the claims
recite the collection and comparing of known information and comparing
new and stored information and using rules to identify options which have
been found to be abstract ideas. Ans. 4--5.
The Examiner found that the claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the computer as recited is a generic computer component
that performs generic computer functions. Final Act. 8.
We are not persuaded of error on the part of the Examiner by
Appellant's argument that the claimed invention is not directed to an abstract
idea because it is not directed to a fundamental economic practice, a method
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of organizing human activities, ideas or mathematical relationships and
formulas. Specifically Appellant argues that the claimed concept is not
identified as an abstract idea by a court. We agree with the Examiner that
the claims are directed to the collection and comparing of known
information and comparing new and/or stored information and using rules to
identify options which is an abstract idea. As such, even if the Appellant is
correct, that the claimed invention is not directed to a fundamental economic
practice, a method of organizing human activities, ideas or mathematical
relationships or formulas, it is directed to an abstract idea on this basis. We
note that Appellant admits at page 12 of the Brief that the claims are directed
to receiving, storing, extracting, scanning, flagging, creating data files and
transferring data. As the Examiner clearly stated that the claims are directed
to collection and comparing of known information and comparing new and
stored information and using rules to identify options, the Examiner did,
contrary to the argument of Appellant, identify the exception and clearly
established a prima facie case for showing that the claims are directed to
patent ineligible subject matter.
We are not persuaded of error on the part of the Examiner by
Appellant's argument that the claims do not tie up the use of the entire
abstract concept to which the limitations are directed. \,Vhile preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility." Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015),
cert, denied, 136 S. Ct. 701, 193 (2015) ("[T]hat the claims do not preempt
a11 price optimization or rnay be limited to price optimization in the e-
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commerce setting do not make them any less abstract"). And,"[ w]here a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Af ayo framework, as they are in this case, preemption concerns are
fully addressed and made moot" Ariosa, 788 F.3d at 1379.
Appellant's arguments that the claims are not taught or suggested by
the art are also not persuasive of error on the part of the Examiner. To the
extent Appellant maintains that the limitations of claim l necessarily amount
to "significantly more" than an abstract idea because the claimed apparatus
is allegedly patentable over the prior art, Appellant misapprehends the
controlling precedent. Although the second step in the Alicellviayo
framework is termed a search for an "inventive concept," the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for "'an
elernent 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. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304.
We are not persuaded of error on the part of the Examiner by
Appellant's argument that the invention claimed solves problems associated
with or improves the technological process of monitoring events. Appellant
argues that the claimed invention addresses the challenge of keeping a
person or property owner up to date when someone has placed or failed to
remove a "cloud" on her/his name or property. However, the improvements
that the Appellants direct our attention to are not improvements to the
computer or how the computer stores and processes the data and are in fact
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part of the abstract idea itself of storing, receiving, monitoring and
transmitting data.
In view of the foregoing, we will sustain the rejection of claim 11
under 35 U.S.C. § 101. We will also sustain this rejection as it is directed to
claims 12 and 17 because the Appellant argues that the arguments advanced
in regard to this rejection as it is directed to claim 11 also apply to claims 12
and 17. We will also sustain this rejection as it is directed to the remaining
claims because the Appellant has not argued the separate patent eligibility of
these claims.
Rejection under 35 USC§ 112, second paragraph
The Examiner determined that the claims are indefinite because it is
unclear how the transaction presence presents itself i.e., if it is a recording, a
flag, or an alert that a lien has been recorded.
Section 112, second paragraph, of 35 U.S.C. requires the applicant
distinctly claim the subject matter which the applicant regards as his
invention. In our view, claim 11 is broad enough to include any means of
presenting the transaction presence including but not limited to a flag, signa]
or an alert. vVe agree with Appellant that there is no requirement that the
claims recite how the presence of the transaction is presented. Thus, claim
11 is simply broad, and "breadth is not to be equated with indefiniteness."
In re Miller, 441 F.2d 689, 693 (CCPA 1971).
In view of the foregoing, we will not sustain this rejection.
Rejection under 35 USC§ 103
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Application 12/904,713
We will not sustain this rejection because we agree with the Appellant
that there would have been no reason to combine the teachings of the applied
references.
The Examiner's proposed modification to Herava's device is "more
than the simple substitution of one known element for another or the mere
application of a known technique to a piece of prior art ready for the
improvement." See KSR, 127 S. Ct. at 1740. The Supreme Court stated that
when the claimed subject matter involves "more than the simple substitution
of one known element for another or the mere application of a known
technique to a piece of prior art ready for the improvement," then an
apparent reason to combine the known elements in the fashion claimed must
be shown. Id. The Court explained:
Often, it will be necessary for a court to look
to interrelated teachings of multiple patents; the
effects of demands known to the design
community or present in the marketplace; and the
background knowledge possessed by a person
having ordinary skill in the art, all in order to
determine whether there was an apparent reason to
combine the known elements in the fashion
claimed by the patent at issue.
Id. at 1740-41. The Court noted that "[t]o facilitate review, this analysis
should be made explicit." Id. (citing In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) ("[R ]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness")).
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Application 12/904,713
The Examiner has failed to set forth a reason with a rational
underpinning as to why one of ordinary skill in the art would have been led
to combine the method of the Chapman system that monitors a user's credit
report with the disparate teachings in Sealand of a database of real estate
listings. As such, we will not sustain this rejection.
The Examiner's Answer neither repeats, nor discusses, the double
patenting rejection or the rejection of claims 12-17 and 23-27 under 35
U.S.C. § 103(a) as being unpatentable over Chapman in view of Descloux.
We, therefore, conclude the rejection has been withdrawn. Any rejection not
repeated and discussed in the answer may be taken by the Board as having
been withdrawn. Ex Parte Emm, 118 USPQ 180 (Bd. App. 1957).
DECISION
We affirm the Examiner's§ 101 rejection.
We do not affirm the Examiner's rejection under§ 112, second
paragraph.
We do not affirm the Examiner's rejection under§ 103 of claims 11
and 19-22 as being unpatentable over Chapman, Sealand and Morris.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l) (2009).
ORDER
AFFIRMED
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