Ex Parte Yao et al

Patent Trial and Appeal Board

Dec 14, 2018

13031852 (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/031,852 02/22/2011
134795 7590 12/18/2018
MICHAEL BEST & FRIEDRICH LLP (DC)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
WenXiong W. Yao
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.
880417-0089-USOO 5797
EXAMINER
LINDSEY III, JOHNATHAN J
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
12/18/2018 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):
DCipdocket@michaelbest.com
sbj ames@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WENXIONG W. YAO, ERIC ROSENBLATT, ALEXEI M.
KISSELEV, NATHAN PIETER DEN HERDER, and
SIL VIU CRISTIAN MARGHESCU 1
Appeal2017-000515
Application 13/031,852
Technology Center 3600
Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 23-31 which are all the claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b ). Oral arguments were
presented on November 28, 2018.
1 The Appeal Brief identifies the Real Party in Interest as Fannie Mae. App.
Br. 4.
Appeal2017-000515
Application 13/031,852
SUMMARY OF THE DECISION
We AFFIRM.
THE INVENTION
The Appellant's claimed invention is directed to estimating real estate
values (Spec., para. 1 ). Claim 23, reproduced below, is representative of the
subject matter on appeal.
23. A method for estimating property values, the method
compnsmg:
specifying, by a computer, a geographical region, the
geographical region including therein a plurality of first sub-
regions that each include a plurality of second sub-regions, the
plurality of
second sub-regions being at a level of granularity equal to or
finer than census block groups;
selecting, by the computer, properties that are located
within the geographical region, and accessing, by the computer,
property data of each of the properties;
determining, by the computer, a price equation for the
geographical region by performing a regression based upon the
property data, the regression modeling the relationship between
sale price and a set of explanatory variables, the set of
explanatory variables including a location variable that is a
categorical variable specifying in which of the plurality of
second sub-regions each of the
respective selected properties is located, wherein a location
fixed effect is determined for each of the plurality of second
sub-regions from the location variable;
estimating, by the computer, a price of a subject property
located within a given second sub-region of the plurality second
sub-regions by adjusting comparable properties by adjustment
factors that are based on the price equation, the adjustment
factors including a location adjustment factor; and
determining, by the computer, whether a first number is
less than a first predetermined threshold, the first number
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Application 13/031,852
corresponding to a number of the selected properties that are
located within the given second sub-region,
wherein, when the first number is not less than the first
predetermined threshold, the location adjustment factor is
determined by the computer from the location fixed-effect of
the given second sub-region, and
when the first number is less than the first predetermined
threshold, the method further comprises:
determining, by the computer, a location offset
function using the determined price equation;
determining, by the computer, whether a second
number is less than a second predetermined threshold, the
second number corresponding to a number of the selected
properties that are located within a given first sub-region
of the plurality of first sub-regions, the given first sub-
region including the given second sub-region;
when the second number is not less than the
second predetermined threshold, calculating, by the
computer, a substitute location effect for the given first
sub-region by using the location offset function to
calculate a location offset value for each of the selected
properties that is located within the given first sub-
region, the location adjustment factor being determined
by the computer from the substitute location effect; and
when the second number is less than the second
predetermined threshold, calculating, by the computer, a
modeled location effect for the given second sub-region
by:
performing a regression on the location
offset function modeling the relationship between
location offset and median market value at the
second sub-region level to determine a location
offset coefficient, and multiplying, by the
computer, the determined location offset
coefficient and the median market value of the
given second sub-region, the location adjustment
factor being determined from the modeled location
effect.
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Application 13/031,852
THE REJECTION
The following rejection is before us for review:
Claims 23-31 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence. 2
ANALYSIS
Rejection under 35 USC§ 101
The Appellant argues that the rejection of claim 23 is improper
because the claim is not directed to an abstract idea (App. Br. 15-17, Reply
Br. 6-8). The Appellant further argues that the claim is also "significantly
more" than the alleged abstract idea (App. Br. 17-26, Reply Br. 5, 6, 8-11).
In contrast, the Examiner has determined that the rejection of record is
proper (Ans. 2-12).
We agree with the Examiner. Under 35 U.S.C. § 101, 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 an implicit exception: "laws of nature,
natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice
Corp. Pty. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014).
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 13/031,852
In judging whether claim 23 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., 566 U.S. 66, 75-76 (2012)).
In accordance with that framework, we first determine whether the claim is
"directed to" a patent-ineligible abstract idea. If so, we then consider the
elements of the 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 of the abstract idea. Id. (internal
quotations and citations omitted). 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.
(internal quotations and citations omitted). The Court also stated that "the
mere recitation of a generic computer cannot transform a patent-ineligible
abstract idea into a patent-eligible invention." Id. at 2358.
Here, we determine that the claim is directed to the concept of
estimating property values using a series of mathematical steps. This is a
fundamental economic practice long prevalent in our system of commerce or
an idea in itself, and is an abstract idea beyond the scope of§ 101. The
Specification at paragraph 1 indicates that the invention is directed to
estimating real property value estimation using a regression of variables.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
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Application 13/031,852
not. The Specification at paragraph 126 describes using any combination of
software, hardware, and/or firmware.
Considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
We note the point about pre-emption (App. Br. 18). While pre-
emption "'might tend to impede innovation more than it would tend to
promote it,' thereby thwarting the primary object of the patent laws" (Alice,
134 S. Ct. at 2354 (quoting Mayo 566 U.S. at 71)), "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, (2015)("[T]hat the claims do not preempt all
price optimization or may be limited to price optimization in the e-
commerce setting do not make them any less abstract.").
For these above reasons the rejection of claim 23, and its dependent
claims, which were not separately argued is sustained. Claim 26 is directed
to similar subject matter and the rejection of this claim and its dependent
claims which were not separately argued is sustained for the same reasons
given above.
We reach the same conclusion as to independent apparatus claim 29
and its dependent claims. Here, as in Alice, "the system claims are no
different in substance from the method claims. The method claims recite the
abstract idea implemented on a generic computer; the system claims recite a
handful of generic computer components configured to implement the same
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idea." Alice, 134 S. Ct. at 2351. "[T]he mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention. Stating an abstract idea 'while adding the words 'apply
it' is not enough for patent eligibility." Id. at 2358 (quoting Mayo, 566 U.S.
at 72).
CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 23-31 under 35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 23-31 is sustained.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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