Ex Parte Stern et al

Patent Trial and Appeal Board

Jun 4, 2018

12508514 (P.T.A.B. Jun. 4, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/508,514 07/23/2009
42532 7590 06/06/2018
PROSKAUER ROSE LLP
ONE INTERN A TI ON AL PLACE
BOSTON, MA 02110
FIRST NAMED INVENTOR
Hadley Rupert Stern
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.
FID-039B 8162
EXAMINER
VYAS, ABHISHEK
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
06/06/2018 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):
DocketingPatentBoston @proskauer.com
oandrews@proskauer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HADLEY RUPERT STERN and JOHN C. McDONOUGH
Appeal2017-003221
Application 12/508,514 1
Technology Center 3600
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the final
rejection of claims 1-8 and 10-15. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is FMR LLC. App. Br. 2.
Appeal2017-003221
Application 12/508,514
THE CLAIMED INVENTION
The present invention relates generally to "methods and apparatuses,
including computer program products, for location-based address
determination and real estate valuation." Spec. i-f 1. Independent claim 1 is
directed to a method; independent claims 13 and 14 are directed to systems;
and independent claim 15 is directed to a computer program product. App.
Br. 27, 29-32.
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A computerized method for location-based real estate
valuation, the method comprising:
receiving, by a server computing device, current location
information and a plurality of digital photographs from a mobile
device, the location information including global positioning
system (GPS) data captured by a GPS receiver of the mobile
device and the plurality of digital photographs taken by a camera
coupled to the mobile device, wherein the digital photographs
depict a series of addressable locations in proximity to each
other;
determining, by the server computing device, a street
address for each of the addressable locations in the photographs
by processing the received digital photographs in association
with the GPS data, wherein the server computing device extracts
from each photograph non-textual physical features and
dimensions of a structure represented in the photograph and
compares the extracted features and dimensions with non-textual
physical features and dimensions of a structure represented in
one or more prestored photographs to determine a match;
if a match cannot be determined for one of the addressable
locations:
determining, by the server computing device, a
street address for the non-determinable addressable
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location based upon the street addresses determinable for
the digital photographs depicting the addressable locations
in proximity to the non-determined addressable location;
and
retrieving financial data associated with the street address.
REJECTION ON APPEAL 2
Claims 1-8 and 10-15 stand rejected under 35 U.S.C. § 101 for being
directed to patent ineligible subject matter. Ans. 3.
ANALYSIS
35 U.S. C. § 1 OJ Rejections
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under 35 U.S.C. § 101.
In the first step, "[ w ]e must first determine whether the claims at issue are
directed to a patent-ineligible concept." Alice, 134 S. Ct. at 2355.
The Examiner concludes the claimed elements of receiving current
location information (including GPS data) and digital photographs from a
mobile device, determining a street address based on the received location
information, and retrieving financial data associated with the street address
is directed to using categories to organize, store, and transmit information, as
well as organizing information through mathematical correlations. Final
Act. 4; Ans. 3. The Examiner further determines the claims are similar to
2 Claims 1-8 and 10-15 were previously rejected as being under 35 U.S.C.
§ 112(b ), but the rejection has been withdrawn. Ans. 2.
Claims 1-8 and 10-15 were previously rejected as being unpatentable under
35 U.S.C. § 103(a), but the rejection has been withdrawn. Ans. 2.
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those found to be abstract in Cyberfone System, LLC v. CNN Interactive
Group., Inc., 558 F. App'x 988 (Fed. Cir. 2014) and Digitech Image
Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed. Cir.
2014). Final Act. 4; Ans. 3.
The Examiner determines the claims are similar to those found
to be abstract in Cyberfone, and are directed to using categories to organize,
store, and transmit information (receiving data, determining a street address
based on the data, and retrieving financial data associated with the street
address). Final Act. 4; Ans. 3. A method of "using categories to organize,
store, and transmit information is well-established ... the idea of collecting
information in classified form, then separating and transmitting that
information according to its classification, is an abstract idea that is not
patent-eligible." Cyberfone, 558 F. App'x at 992.
The Examiner further determines the claims are similar to those found
to be abstract in Digitech, and are directed to organizing information through
mathematical correlations (determining a street address based on data and
retrieving financial data associated with the street address). Final Act. 4;
Ans. 3. A method describing the "process of organizing information through
mathematical correlations" is an abstract idea. Digitech, 758 F.3d at 1350.
Appellant argues that the claims are not directed to a law of nature
and would not be a patent on an algorithm itself. App. Br. 11-12. Appellant
further argues that the claims are not directed to making a computation
according to a mathematical formula, and instead recite elements directed
expressly to the operation of specialized hardware components of the recited
devices. App. Br. 12-13.
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We are not persuaded by Appellant's arguments. We agree with the
Examiner that the claims are directed to the abstract idea "organizing a
human activity of retrieving financial data related to a determined street
address." Final Act. 6.
Here, the claims are directed to receiving location information (GPS
data captured by a GPS receiver) and digital photographs (captured by a
camera, depicting addressable locations in proximity to each other) from a
mobile device, determining a street address for the photographed locations
by processing and analyzing the location information and photographs
(comparing features, and determining a match or determining a street
address using proximity locations), and retrieving financial data associated
with the street address. As concluded by the Examiner, the claims are
directed to the abstract idea of "real estate valuation involving determining
the location of an addressable and non-addressable location." Ans. 3.
Moreover, the claims are directed to a computerized method for real
estate valuation and uses a GPS and camera (for location information and
digital photographs) to automate a human activity (organize data, process
and analyze the data to determine street addresses, and retrieve related
financial data). Our reviewing court has found that if a method can be
performed by human thought (organize data, process and analyze the data to
determine street addresses, and transmit related financial data), these
processes remain unpatentable even when automated (using a GPS for
location information, a camera for digital photographs, and a processor) to
reduce burden to the user. Cy her Source Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
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holding of the Supreme Court in Gottschalkv. Benson, [409 U.S. 63
(1972)]."). Appellant has not adequately shown the claims are not directed
to an abstract idea.
In the second step of Alice, we "consider the elements of each claim
both individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1297-1298
(2012)). In other words, the second step is to "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."' Id. (quoting Mayo, 132 S. Ct. at 1294).
Appellant argues that the claimed elements add significantly more to
the alleged abstract idea. See App. Br. 13-14. Specifically, Appellant
argues that the independent claims "each recite more than a generic
computer," specifically a mobile device, GPS receiver, camera, and server
computing device, which are "not only specially-configured to perform
particular operations, but also work together to achieve the operations
defined by the method." App. Br. 14. Appellant contends the claims "recite
hardware and software in an ordered combination that make a technical,
non-abstract improvement to computerized location-based address
determination using specifically-recited devices" and represent limitations
"other than what is well-understood routine and conventional in the field."
Reply Br. 3. Appellant argues the claims, like in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), recite "meaningful
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limitations that solve a computer-centric problem with a claimed solution
that is necessarily rooted in computer technology." Reply Br. 4.
Appellant further contends the claims, "when viewed as a whole, are
directed to a technical solution unique to computerized, automated
determination of physical street addresses based upon structural information
extracted from digital photographs and upon location information captured
by a GPS receiver of a mobile device," which includes the "unconventional
step of determining a street address for a non-determinable addressable
location." Reply Br. 3 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1335 (Fed. Cir. 2016)). Appellant further argues the claims "contain
an inventive concept when considered as an ordered combination," and that
"the claims recite computing elements utilizing computer image capture,
image analysis, and related networking processes in a specific order to
improve computerized address determination functionality in an
unconventional way" using "unexpected steps that confine them to particular
computer hardware configured for a particular useful application." Reply
Br. 5 (citing BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1349-52 (Fed. Cir. 2016)).
We are not persuaded by Appellant's arguments and agree with the
Examiner's findings and conclusion that the claimed functions of "receiving
data, determining a street address by the computing device and retrieving
information by themselves are interpreted as generic and routine,
conventional and well understood." Ans. 4. We further agree with the
Examiner that the claimed devices are "at a high level of generality and are
recited as performing generic computer functions routinely used in computer
applications." Ans. 4. Appellant has not adequately explained how or
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provided persuasive evidence to show why the claims are performed such
that they are not routine and conventional functions of a generic computer.
The claims recite a "server computing device," "GPS receiver,"
"mobile device," and "camera." As cited by the Examiner (Final Act. 4;
Ans. 4), Appellant's Specification describes "[e]xample devices can include,
but are not limited to a global positioning system (GPS) device, a smart
phone, a portable video game system, an internet appliance, a personal
computer, or the like." Spec. i-f 32; see also Spec. i-fi-176, 78, 79. 82, 83.
Nothing in the claim or Specification requires that any of these components
must be able to perform any special functions. Instead, the claim merely
requires the conventional functions of receiving data, identifying addressable
locations and retrieving data by using generic computer devices.
The claims are also distinguishable from those in DDR. In DDR, the
challenged claims were eligible because they "specif[ied] how interactions
with the Internet are manipulated to yield a desired result - a result that
overrides the routine and conventional" aspects of the technology. DDR,
773 F.3d at 1258-59. Here, we do not discern that these claims "stand
apart," like those in DDR because they merely recite the performance of
some business practice (real estate valuation) along with the requirement to
perform it using generic computer components. See DDR, 773 F.3d at 1257.
In other words, Appellant has not demonstrated theclaimed generic
computer components are able in combination to perform functions that are
not merely generic, like the claims in DDR.
We also disagree with Appellant's arguments that the claims are
similar to those in Enfzsh and BASCOM. In Bascom, the Court found the
ordered combination of the limitations provided the requisite inventive
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concept. BASCOM, 827 F.3d at 1349-1350 ("[A]n inventive concept can be
found in the non-conventional and non-generic arrangement of known,
conventional pieces"). The patent in BASCOM extensively claimed and
explained how a particular arrangement of elements was "a technical
improvement over prior art ways of filtering such content." Id. at 1350
("According to BASCOM, the inventive concept harnesses this technical
feature of network technology in a filtering system by associating individual
accounts with their own filtering scheme and elements while locating the
filtering system on an ISP server."). In Enfish, the patent was "directed to a
specific improvement to computer functionality," specifically how
computers could carry out basic functions of storage and retrieval of data by
way of a self-referential database table. Enfish, 822 F.3d at 1335-1338. In
both BASCOM and Enfish, there existed substantial argument and support
from the Specification concerning the "inventive concept." Here, Appellant
offers little more than attorney argument and conclusory statements, which
we do not find persuasive. As discussed above, Appellant's claims focus on
an abstract idea that uses generic computing components, not on any
improvement to computer technology.
And, to the extent Appellant relies on the Examiner's withdrawal of
the rejection under 35 U.S.C. § 103(a) (Reply Br. 5), Appellant
misapprehends controlling precedent. Although the second step in the Alice
framework is termed a search for an "inventive concept," the analysis is not
an evaluation of novelty or non-obviousness. Alice, 134 S. Ct. at 2355. A
novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. 66 at 78-79. Further,
"under the Mayo/Alice framework, a claim directed to a newly discovered
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law of nature (or natural phenomenon or abstract idea) cannot rely on the
novelty of that discovery for the inventive concept necessary for patent
eligibility." Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369 (Fed. Cir.
2016).
The claims, when viewed as a whole, are nothing more than
conventional processing functions that courts have routinely found
insignificant to transform an abstract idea into a patent-eligible invention.
As such, the claims amount to nothing significantly more than an instruction
to implement the abstract idea on a generic computer - which is not enough
to transform an abstract idea into a patent-eligible invention. See Alice, 134
S. Ct. at 2360.
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claims 1, as well as claims 2-8 and 10-15, not separately argued. See App.
Br. 10.
DECISION
The Examiner's rejection of claims 1-8 and 10-15 under 35 U.S.C.
§ 101 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)(l )(iv).
AFFIRMED
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