John Nicholas and Kristin Gross Trust U/A/D April 13, 2010

Patent Trials and Appeals Board

Nov 19, 2020

2020001232 (P.T.A.B. Nov. 19, 2020)

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.
14/499,057 09/26/2014 John Nicholas Gross JNG 2014-1 6153
23694 7590 11/19/2020
Law Office of J. Nicholas Gross, Prof. Corp.
PO BOX 9489
BERKELEY, CA 94709
EXAMINER
DAGNEW, SABA
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
11/19/2020 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):
eofficeaction@appcoll.com
jngross@pacbell.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JOHN NICHOLAS GROSS
________________

Appeal 2020-001232
Application 14/499,057
Technology Center 3600
________________

Before ROBERT E. NAPPI, CATHERINE SHIANG, and
JASON J. CHUNG, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Non-Final
Rejection of claims 1–40.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
INVENTION
The invention relates to assessing the condition of living structures
and other appurtenant real property features. Spec. 1:16–19.3 Claim 1 is
illustrative of the invention and is reproduced below:

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, Real Data Guru Inc. is the real
party in interest. Appeal Br. 3.
2 Claims 1–40 are cancelled. Appeal Br. 20–27.
3 There are various copies of the Specification that were filed. Throughout
our Decision, we refer to the Specification filed on March 13, 2015.
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1. A method of targeting advertisements based on
features of building structures with a computing system
comprising:
a. providing a first reference file containing first electronic
image data for at least an outside portion of a first target
building structure;
b. providing an electronic annotation tool within an
electronic coding interface presenting both said first electronic
image data and human selectable tags for annotating said first
target building structure, including selectable data fields for
identifying individual building elements including with a type
identifier and a condition identifier;
c. generating a second reference file using the computing
system, based on processing said first reference file and inputs
for said first target building structure provided though said
electronic coding interface, said second reference file
containing:
i. a plurality of individual building elements identified
in said first target building structure with the electronic coding
interface based on said first electronic image data;
ii. a condition associated with each of said plurality of
individual building elements identified with the electronic coding
interface from said first electronic image data;
iii. wherein said first and second reference files are
processed to generate a first target structure profile that
identifies at least a set of structure elements and conditions for
said first target building structure;
d. processing first vendor advertising content with the
computing system identifying at least one of 1) a first
product/service provided by a first vendor; and 2) a target
structure advertising profile;
e. correlating said first advertising content to said first
target structure profile with the computing system to determine
if at least one product/service from said first vendor can be
matched to said first target building structure based on said first
target structure characterization profile;
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f. generating a first advertisement targeted to said first
target building structure based on step (e), which first
advertisement contains personalized advertising consisting of a
combination of at least some of said first image data for said first
target building structure, said first target structure
characterization profile and said first vendor advertising
content.
Appeal Br. 20–214 (Claims Appendix) (emphases added).

REJECTIONS
The Examiner rejects claims 1–40 under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. Non-Final Act. 3–6.
The Examiner rejects claims 1–34 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Stinson (US 2009/0006185 A1;
published Jan. 1, 2009), Shneiderman (US 7,010,751 B2; issued Mar. 7,
2006), and Loveland (US 2002/0161608 A1; published Oct. 31, 2002).
Non-Final Act. 11–28.
The Examiner rejects claims 35–40 under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Stinson and Loveland. Non-Final Act.
7–11.
ANALYSIS
I. Claims 1–40 Rejected Under 35 U.S.C. § 101
A. 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.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to

4 There are two Appeal Briefs that were filed: (1) an Appeal Brief filed on
May 13, 2019; and (2) an Appeal Brief filed on June 17, 2019. Throughout
our Decision, we refer to the Appeal Brief filed on May 13, 2019.
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include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” 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. Kappos, 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 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 (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
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become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“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].’” Id. (alterations in original) (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.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
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(“2019 Revised Guidance”).5 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also Update at 1.
Under the 2019 Revised Guidance and the Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).6
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:

5 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “Update”)
(available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).
6 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(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.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
C. The Examiner’s Rejection and Appellant’s Arguments
The Examiner concludes the present claims recite certain methods of
organizing human activity. Ans. 4, 7, 9.7 The Examiner concludes the
present claims are not integrated into a practical application and there are no
limitations recited in the present claims that add significantly more to the
abstract idea. Id. at 5–6. The Examiner determines the present claims do
not amount to significantly more than an abstract idea itself because the
abstract idea is implemented using additional elements that are well-
understood, routine, and conventional. Non-Final Act. 30 (citing Spec. 8:5–
9, 14:22–27, 26:29–27:98).
Appellant argues claim 1 does not recite an abstract idea because it
recites examining and coding building elements from electronic image data
to identify their type, condition, etc. and generate a building structure

7 There are two Appeal Briefs that were filed: (1) an Appeal Brief filed on
May 13, 2019; and (2) an Appeal Brief filed on June 17, 2019. Throughout
our Decision, we refer to the Appeal Brief filed on May 13, 2019.
8 The Examiner refers to paragraphs 43, 78, and 124 of the published
application US 2015/0186953, which correspond to the sections of the
Specification that we cited above. Throughout this Decision, we refer to
citations from the Specification.
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profile. Appeal Br. 7–9; Reply Br. 4. Appellant argues claim 29 does not
recite an abstract idea because it recites defining a particular type of cluster
based on target building structures. Appeal Br. 13; Reply Br. 7. Appellant
argues claims 38–40 are not abstract because they recite training of an
electronic image classifier. Appeal Br. 14; Reply Br. 7–8.
Appellant argues that the present claims recite an improvement to the
relevance of advertising targeting to the specific needs of a structure. Id. at
10–12 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016); Trading Technologies International Inc., v. CQG, Inc., 675 F. App’x
1001 (Fed. Cir. 2017) (non-precedential); Spec. 37:9–169); Reply Br. 3–4, 6.
Appellant argues that claim 21 is similar to the claims in Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011)
because it is directed to improvements in the computer related technology
such as generating a simulated remediation of defects in a first target
building structure in visual form, and presenting the visual form in a printed
or electronic advertisement. Appeal Br. 13–14.
Appellant argues the Examiner does not provide the evidence required
by Berkheimer to support a determination that the additional elements are
well-understood, routine, or conventional. Appeal Br. 12–13 (citing
Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)); Reply Br. 6.
Appellant argues claims 5 and 35 recites using a trained electronic image
classifier for identifying building elements and their condition; claims 10–13
recite performing an online verification test for a first user requesting

9 Appellant’s citation refers to page 38 of the Specification. Appeal Br. 11.
However, in the Specification filed March 13, 2015, the actual page number
is page 37. We, therefore, refer to page 37.
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designation as an owner of a first target building structure; and claims 5, 10–
13, and 35 do not recite functions that are well-understood, routine, or
conventional. Appeal Br. 13; Reply Br. 8. We disagree with Appellant.
D. Step 2A, Prong 1
Patent eligibility under 35 U.S.C. § 101 is a question that we resolve
pursuant to the 2019 Revised Guidance. The emphasized portions of claim
1, reproduced above (see supra at 2), recite commercial interactions because
they pertain to targeting advertising. See 2019 Revised Guidance, 84 Fed.
Reg. at 52 n.14. Commercial interactions fall into the category of certain
methods of organizing human activity. Id. Certain methods of organizing
human activity are a type of abstract idea. Id.
We, therefore, disagree with Appellant’s argument that claim 1 does
not recite an abstract idea because it recites examining and coding building
elements from electronic image data to identify their type, condition, etc.
and generate a building structure profile. Appeal Br. 7–9. The additional
elements (i.e., the non-emphasized portions of claim 1 recited supra at 1–2)
are generic computer components for the reasons discussed infra.
Similarly, we disagree with Appellant’s argument that claim 29 does
not recite an abstract idea because it recites defining a particular type of
cluster based on target building structures. Appeal Br. 13. Claim 29 recites
similar features as claim 1 (i.e., an abstract idea as discussed in the
preceding paragraph) plus defining a particular type of cluster based on
target building structures (i.e., also part of commercial interactions because
it pertains to targeting advertising, which is certain methods of organizing
human activity (an abstract idea)).
Similarly, we disagree with Appellant’s argument that claims 38–40
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are not abstract because they recite training of an electronic image classifier.
Appeal Br. 14. Claim 38 recites “a noise based model to identify a condition
of such individual building elements,” which is a commercial interaction
because it pertains to targeting advertising. See 2019 Revised Guidance, 84
Fed. Reg. at 52 n.14. Commercial interactions falls into the category of
certain methods of organizing human activity (an abstract idea)). Id. Claim
39 recites “statistical modeling of locations of building structure features to
identify said individual building elements,” which is a commercial
interaction (i.e., an abstract idea) because it pertains to targeting advertising.
Id. Claim 40 recites “feature extraction a block level of said electronic
image data to identify said individual building elements,” which is a
commercial interaction (i.e., an abstract idea) because it pertains to targeting
advertising. Id. Moreover, we conclude the limitation “electronic” is an
extra-solution activity.
We must still determine whether the abstract idea is integrated into a
practical application, namely whether the claim applies, relies on, or uses the
abstract idea in a manner that imposes a meaningful limit on the abstract
idea, such that the claim is more than a drafting effort designed to
monopolize the abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at
54–55. We therefore (1) identify whether there are any additional recited
elements beyond the abstract idea, and (2) evaluate those elements both
individually and collectively to determine whether they integrate the
exception into a practical application. See id.
Accordingly, we proceed to Prong 2.
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E. Step 2A, Prong 2
Here, the elements in the present claims used to implement the
abstract idea are the “electronic coding interface” and “computing system.”
See 2019 Revised Guidance, 84 Fed. Reg. at 52. The additional elements of
the present claims do not integrate the abstract idea into a practical
application because they do not impose any meaningful limits on practicing
the abstract idea for the following reasons.
Appellant does not identify persuasively how the Specification sets
forth an improvement in technology. Appeal Br. 9–10 (citing Core Wireless
Licensing S.A.R.L v. LG Elecs., Inc., 880 F.3d 1356 (Fed. Cir. 2018). The
Update addresses how we consider evidence of improvement that is
presented to us. The Update states:
[T]he evaluation of Prong Two requires the use of the
considerations (e.g. improving technology, effecting a particular
treatment or prophylaxis, implementing with a particular
machine, etc.) identified by the Supreme Court and the Federal
Circuit, to ensure that the claim as a whole “integrates [the]
judicial exception into a practical application [that] will apply,
rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial
exception.
Update 11 (emphases added). The Update further states:
During examination, the examiner should analyze the
“improvements” consideration by evaluating the specification
and the claims to ensure that a technical explanation of the
asserted improvement is present in the specification, and that the
claim reflects the asserted improvement. Generally, examiners
are not expected to make a qualitative judgment on the merits of
the asserted improvement. If the examiner concludes the
disclosed invention does not improve technology, the burden
shifts to applicant to provide persuasive arguments supported by
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any necessary evidence to demonstrate that one of ordinary skill
in the art would understand that the disclosed invention improves
technology. Any such evidence submitted under 37 C.F.R.
§ 1.132 must establish what the specification would convey to
one of ordinary skill in the art and cannot be used to supplement
the specification. For example, in response to a rejection under
35 U.S.C. § 101, an applicant could submit a declaration under
§ 1.132 providing testimony on how one of ordinary skill in the
art would interpret the disclosed invention as improving
technology and the underlying factual basis for that conclusion.
Id. at 13 (emphasis added).
We, therefore, focus on any evidence Appellant cites in its briefs, as
discussed in the Update. Appellant refers us to page 37, lines 9–16 of the
Specification. Appeal Br. 10–12 (citing Spec. 37:9–16). However, page 37,
lines 9–16 of the Specification discuss targeting coupons to specific houses
based on stored profiles for structures and owners instead of targeting every
house. Spec. 37:9–16.
At best, this is an improvement to targeting advertising (i.e., an
abstract idea as discussed supra in § I.D). Id.; see, e.g., Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim
for a new abstract idea is still an abstract idea.”). “[U]nder the Mayo/Alice
framework, a claim directed to a newly discovered 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, 1376 (Fed. Cir. 2016) (citations
omitted).
We are not persuaded by Appellant’s citation to Enfish to demonstrate
that the present claims recite an improvement to the relevance of advertising
targeting to the specific needs of a structure. Appeal Br. 10–12 (citing
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Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)). In Enfish,
the Federal Circuit considered how the invention in Enfish was superior to
the technology in the prior art. That is, the court considered “the
specification’s emphasis that ‘the present invention comprises a flexible,
self-referential table that stores data,’” “[t]he specification also teaches that
the self-referential table functions differently than conventional database
structures,” and “traditional databases, such as ‘those that follow the
relational model and those that follow the object oriented model’ are inferior
to the claimed invention.” Enfish, 822 F.3d at 1337 (interior citation
omitted). Moreover, in Enfish “‘[t]he structural requirements of current
databases require a programmer to predefine a structure and subsequent
[data] entry must conform to that structure,’ [and] the ‘database of the
present invention does not require a programmer to preconfigure a structure
to which a user must adapt data entry.’” Id. (first and second alterations in
original). Based on the foregoing, the court determined the claims
“achieve[d] other benefits over conventional databases, such as increased
flexibility, faster search times, and smaller memory requirements.” Id.
Unlike the claims of Enfish, the present claims do not recite “a specific
improvement to the way computers operate, embodied in the self-referential
table” or other types of similar improvements. Id. at 1336. Nor do the
claims recite an improvement to the underlying computer technology or to
any of the additional elements, as discussed supra. Instead, the claims are
directed to an abstract idea as discussed supra.
We also disagree with Appellant’s argument that the present claims
recite an improvement to the relevance of advertising targeting to the
specific needs of a structure. Appeal Br. 10–12 (citing Trading
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Technologies International Inc., v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir.
2017) (non-precedential)). In Trading Technologies, the patents described
electronic trading of stocks, bonds, futures, options, and similar products.
Trading Technologies Int’l Inc., v. CQG, Inc., 675 F. App’x at 1002. The
patents explained problems that arose when a trader attempted to enter an
order at a particular price, but missed the price because the market fluctuated
prior to the order entry and execution. Id. Also, sometimes the trades were
executed at different prices than intended because of rapid market
movement. Id. at 1002–03. Unlike the claims of Trading Technologies, the
present claims do not recite a graphical user interface that prevents order
entry at a changed price or similar improvements. Id. at 1003.
We further disagree with Appellant’s argument that claim 21 is
similar to the claims in Classen Immunotherapies, Inc. v. Biogen IDEC, 659
F.3d 1057 (Fed. Cir. 2011) because it is directed to improvements in the
computer related technology such as generating a simulated remediation of
defects in a first target building structure in visual form, and presenting the
visual form in a printed or electronic advertisement. Appeal Br. 13–14.
In Classen, claim 1 stated determining whether an immunization
schedule affects the incidence or severity of a chronic immune-mediated
disorder by reviewing information on whether an immunization schedule
affects the incidence or severity of a chronic immune-mediated disorder.
Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d at 1067. Unlike
the claims of Classen, claim 21 of the present case does not recite the idea of
comparing known immunization results that are found in scientific literature,
and does not require using this information for immunization purposes or
similar improvements. Id.
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Furthermore, the additional elements in the present claims, namely
“electronic coding interface” and “computing system” do not, either
individually or in combination, integrate the abstract idea into a practical
application. In particular, Appellant’s Specification discloses that these
elements encompass generic computer components. Spec. 4:1–2, 4:11–23,
5:19–29, 7:4–5, 7:19–23. Merely adding generic computer components to
perform abstract ideas does not integrate those ideas into a practical
application. See 2019 Revised Guidance, 84 Fed. Reg. at 55 (identifying
“merely includ[ing] instructions to implement an abstract idea on a
computer” as an example of when an abstract idea has not been integrated
into a practical application).
We, therefore, conclude that the additional elements, whether
considered individually or as an ordered combination, do not integrate the
abstract idea into a practical application because the additional elements are
generic computer components that do not impose meaningful limits on
practicing the abstract idea.
Appellant does not make any other arguments pertaining to Step 2A,
Prong 2. Because we determine that the present claims recite an abstract
idea that is not integrated into a practical application, we proceed to Step 2B.
F. Step 2B
We disagree with Appellant’s argument, that the Examiner fails to
provide sufficient evidence to support the finding that the additional
elements recited in claims 1 and 35 implement the abstract idea, whether
considered individually or as an ordered combination, are well-understood,
routine, and conventional. Appeal Br. 8, 13 (citing Berkheimer, 881 F.3d
1360).
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The Examiner determines the present claims do not amount to
significantly more than an abstract idea itself because the abstract idea is
implemented using additional elements that are well-understood, routine,
and conventional. Non-Final Act. 30 (citing Spec. 8:5–9, 14:22–27, 26:29–
27:9).
The Specification indicates that the additional elements (i.e.,
“electronic coding interface” and “computing system”) are nothing more
than generic computer components. Spec. 8:5–9, 14:22–27, 26:29–27:9.
Appellant’s Specification indicates these additional elements were well-
understood, routine, and conventional components because it describes them
at a high level of generality and in a manner that indicates that they are
sufficiently well-known. Id.
To the extent that Appellant is arguing that the Specification does not
support a finding that the additional elements implementing the abstract idea
are well-understood, routine, and conventional, we disagree because the
Specification indicates that the additional elements (i.e., “image processing
system” and “automated trained classifier”) are nothing more than generic
computer components. Spec. 11:1–4, 14:22–27. Appellant’s Specification
indicates these additional elements were well-understood, routine, and
conventional components because it describes them at a high level of
generality and in a manner that indicates that they are sufficiently well-
known.
For at least the above reasons, we conclude, under the 2019 Revised
Guidance, that each of the present claims, considered as a whole, is directed
to a patent-ineligible abstract idea that is not integrated into a practical
application, and does not include an inventive concept. We, therefore,
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sustain the Examiner’s rejection of: (1) independent claims 1, 29, and 35;
and (2) dependent claims 2–28, 30–34, and 36–40 under § 101.
II. Claims 1–40 Rejected Under 35 U.S.C. § 103
A. Claims 1–4 and 29–35
The Examiner finds Shneiderman teaches annotating images, which
the Examiner maps to the limitation “including with a type identifier and a
condition identifier” recited in claim 1. Non-Final Act. 13 (citing
Shneiderman, 4:23–37, Fig. 9). The Examiner finds Stinson teaches the
limitation “generating a second reference file . . . containing . . . a condition
associated with each of said plurality of individual building elements”
recited in claim 1. Non-Final Act. 13 (citing Stinson ¶ 28, Figs. 4, 16). The
Examiner finds Loveland teaches limitations (e) and (f) recited in claim 1.
Non-Final Act. 14 (citing Loveland ¶ 86).
Appellant argues Shneiderman merely teaches annotating an image,
but fails to teach a “type identifier” or a “condition identifier” for an
identified individual building element. Appeal Br. 14–16; Reply Br. 8–9.
Appellant argues Stinson fails to teach creating a second reference file
containing a condition associated with a plurality of individual building
elements. Appeal Br. 16; Reply Br. 9–10. Appellant argues Loveland fails
to teach limitations (e) and (f) recited in claim 1. Appeal Br. 16–17; Reply
Br. 10–11. Appellant argues Stinson’s paragraph 28 fails to teach clustering
structures based on their common features and associated common
conditions as required by claim 29. Appeal Br. 18; Reply Br. 12. Appellant
argues Stinson and Loveland fails to teach an automated classifier as
required by claim 35. Appeal Br. 18–19; Reply Br. 12. We disagree with
Appellant.
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Claim construction is an issue of law that is left for a court or a
tribunal. “[W]hen the district court reviews only evidence intrinsic to the
patent (the patent claims and specifications, along with the patent’s
prosecution history), the judge’s determination will amount solely to a
determination of law.” Teva Pharms. USA, Inc. v. Sandoz, Inc., 574 U.S.
318, 331 (2015). “[T]he ultimate issue of the proper construction of a claim
should be treated as a question of law.” Id. at 326.
We construe claim terms according to their broadest reasonable
construction in light of the specification of the patent or application in which
they appear. In re Bigio, 381 F.3d 1320, 1324 (Fed. Cir. 2004). Consistent
with the broadest reasonable construction, claim terms are generally given
their ordinary and customary meaning, as understood by a person of
ordinary skill in the art, in the context of the entire specification. In re
Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Also, we must
be careful not to read a particular embodiment appearing in the written
description into the claim if the claim language is broader than the
embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
(“[L]imitations are not to be read into the claims from the specification.”).
However, a term may be defined in the specification with reasonable clarity,
deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir.
1994).
We note that the limitation “including with a type identifier and a
condition identifier” recites non-functional descriptive material because it
does not change the operation of the claimed processor. The informational
content of non-functional descriptive material is not entitled to weight in the
patentability analysis. See Ex parte Nehls, 88 USPQ2d 1883, 1887–90
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(BPAI 2008) (precedential); Ex parte Curry, 84 USPQ2d 1272 (BPAI 2005)
(informative) (Federal Circuit Appeal No. 2006-1003), aff’d, Rule 36 (June
12, 2006)); Ex parte Mathias, 84 USPQ2d 1276 (BPAI 2005) (informative),
aff’d, 191 F. App’x 959 (Fed. Cir. 2006).
As a result, we need not decide whether Shneiderman teaches the
limitation “including with a type identifier and a condition identifier.”
Appeal Br. 14–16; Reply Br. 8–9.
As for Appellant’s second, third, and fourth arguments, in order to
rebut a prima facie case of unpatentability, Appellant must point out the
supposed Examiner errors distinctly and specifically, and the specific
distinctions believed to render the claims patentable over the applied
references. See 37 C.F.R. § 41.37(c)(1)(iv) (2018) (“A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim.”); see also In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”); cf. In re
Baxter Travenol Labs., 952 F.2d 388, 391 (Fed. Cir. 1991) (“It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.”).
In this case, Appellant does not distinctly and specifically point out
why Stinson fails to teach creating a second reference file containing a
condition associated with a plurality of individual building elements.
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Appeal Br. 16.10 Nor does Appellant distinctly and specifically point out
why Loveland fails to teach limitations (e) and (f) recited in claim 1. Appeal
Br. 16–17.11 Also, Appellant fails to distinctly and specifically point out
why Stinson’s paragraph 28 fails to teach clustering structures based on their
common features and associated common conditions as required by claim
29. Appeal Br. 18; Reply Br. 12.

10 Appellant alleges that because the Examiner makes a new finding in the
Answer by citing to Stinson’s Figures 4 and 16, Appellant can introduce new
detailed arguments pertaining to Stinson. Reply Br. 9–10. However, the
Examiner cites to Figures 4 and 16 of Stinson in the Non-Final Action.
Non-Final Act. 12–13 (citing Stinson ¶ 28, Figs. 4 and 16). Appellant’s
argument is untimely and waived because the Examiner did not change the
theory of unpatentability in the Answer (compare Non-Final Act. 12–13
(citing Stinson ¶ 28, Figs. 4 and 16) with Ans. 10–11 (citing Stinson ¶ 28,
Figs. 4 and 16)), while Appellant proffered new arguments in the Reply
Brief (compare Appeal Br. 16 (lacking arguments that distinctly and
specifically point out the alleged Examiner’s error) with Reply Br. 9–10
(including new specific arguments pertaining to Stinson)) without showing
good cause. See 37 C.F.R. § 41.41(b)(2). We, therefore, do not consider
Appellant’s untimely argument on pages 9–10 of the Reply Brief.
11 Appellant alleges that because the Examiner makes a new finding in the
Answer by citing to Loveland’s model 26, Appellant can introduce new
detailed arguments pertaining to Loveland. Reply Br. 10–11. However, the
Examiner cites to paragraph 86 of Loveland, which includes the description
of model 26 in the Non-Final Action. Non-Final Act. 14 (citing Loveland
¶ 86). Appellant’s argument is untimely and waived because the Examiner
did not change the theory of unpatentability in the Answer (compare Non-
Final Act. 14 (citing Loveland ¶ 86) with Ans. 11 (citing Loveland ¶ 86)),
while Appellant proffered new arguments in the Reply Brief (compare
Appeal Br. 16–17 (lacking arguments that distinctly and specifically point
out the alleged Examiner’s error) with Reply Br. 10–11 (including new
specific arguments pertaining to paragraph 86 of Loveland)) without
showing good cause. See 37 C.F.R. § 41.41(b)(2). We, therefore, do not
consider Appellant’s untimely argument on pages 10–11 of the Reply Brief.
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Appellant’s argument that Stinson and Loveland fails to teach an
automated classifier is misplaced because claim 35 does not recite an
“automated classifier.” Appeal Br. 18–19; Reply Br. 12. “[A]ppellant’s
arguments fail from the outset because . . . they are not based on limitations
appearing in the claims.” See In re Self, 671 F.2d at 1348 (CCPA 1982).
Appellant does not argue claims 2–4, 6–9, 14, 18–28, and 30–34
separately with particularity. Appeal Br. 14–19. Accordingly, we sustain
the Examiner’s rejection of: (1) independent claims 1, 29, and 35; and
(2) dependent claims 2–4, 6–9, 14, 18–28 and 30–34 under § 103.
B. Claim 5
The Examiner finds Stinson teaches “first electronic image data
identifying automatically identified individual building elements and
associated conditions for said first building structure generated by an image
processing system using an automated trained classifier” recited in claim 5.
Non-Final Act. 15 (citing Stinson ¶ 58, Figs. 7–8).
Appellant argues the cited references fail to show using an automated
trained classifier for automatically identifying “individual building elements
and associated conditions” for a building structure. Appeal Br. 17. We
disagree with Appellant.
In order to rebut a prima facie case of unpatentability, Appellant must
point out the supposed Examiner errors distinctly and specifically, and the
specific distinctions believed to render the claims patentable over the applied
references. See 37 C.F.R. § 41.37(c)(1)(iv) (2018); see also Lovin, 652 F.3d
at 1357; cf. Baxter Travenol Labs., 952 F.2d at 391.
In this case, Appellant does not distinctly and specifically point out
why the cited references fail to show using an automated trained classifier
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for automatically identifying “individual building elements and associated
conditions” for a building structure. Appeal Br. 17.
Accordingly, we sustain the Examiner’s rejection of claim 5 under
§ 103.
C. Claims 10–13
The Examiner finds Stinson teaches locating a correct house for
recording and verification, which the Examiner maps to the limitation
“performing an online verification test for a first user requesting designation
as an owner of said first target building structure, which verification test
includes measuring a first location of a device associated with such first
user” recited in claim 10. Non-Final Act. 15 (citing Stinson ¶ 58, Figs. 7–8).
Appellant argues Stinson’s paragraph 43 merely teaches determining
if an appraiser has located the property on a digital map rather than
determining anything about the owner of a building structure. Appeal Br.
17. We agree with Appellant.
Although the cited portions of Stinson teach a verification, Stinson’s
verification is not an owner’s verification. Non-Final Act. 15 (citing Stinson
¶ 58, Figs. 7–8). Accordingly, Stinson fails to teach “performing an online
verification test for a first user requesting designation as an owner of said
first target building structure, which verification test includes measuring a
first location of a device associated with such first user” (emphasis added)
recited in claim 10.
Claims 11–13 depend from claim 10. Accordingly, we do not sustain
the Examiner’s rejection of claims 10–13 under § 103.
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D. Claims 15–17
The Examiner finds Stinson teaches the limitation a “computing
system automatically creates logical geographic proximate groups of
building structures having common building elements and conditions in a
designated area” recited in claim 15. Ans. 12–13 (citing Stinson ¶ 72); Non-
Final Act. 19 (citing Stinson ¶ 54).
Appellant argues Stinson’s query logic merely teaches all properties
in a particular zip code instead of units that have “common building
elements and conditions” as recited in claim 15. Appeal Br. 18; Reply Br.
12. We disagree with Appellant.
The Examiner makes a new finding in the Answer, which Appellant
does not rebut. Compare Ans. 12–13 (citing Stinson ¶ 72); Reply Br. 12,
with Non-Final Act. 19 (citing Stinson ¶ 54); Appeal Br. 18. As a result,
Appellant fails to show Examiner error. See Baxter Travenol Labs., 952
F.2d at 391. Claims 16 and 17 depend from claim 15. Appellant does not
argue claims 16 and 17 separately. Accordingly, we sustain the Examiner’s
rejection of claims 15–17 under § 103.
E. Claim 21
The Examiner finds Stinson teaches the limitations recited in claim
21. Ans. 13 (citing Stinson ¶ 49); Non-Final Act. 21 (citing Stinson ¶ 49).
Appellant argues there are no identified “defects” in Stinson or
Shneiderman, let alone simulations of remediation presented to anyone in
the cited passages. Appeal Br. 18; Reply Br. 12. We disagree with
Appellant.
Regarding Appellant’s argument pertaining to claim 21, in order to
rebut a prima facie case of unpatentability, Appellant must point out the
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supposed Examiner errors distinctly and specifically, and the specific
distinctions believed to render the claims patentable over the applied
references. See 37 C.F.R. § 41.37(c)(1)(iv) (2018); see also Lovin, 652 F.3d
at 1357; cf. Baxter Travenol Labs., 952 F.2d at 391. Appellant fails to rebut
the Examiner’s findings pertaining to claim 21 distinctly and specifically.
Accordingly, we sustain the Examiner’s rejection of claim 21 under
§ 103.
F. Claims 36–40
The Examiner finds Stinson teaches the limitations recited in claims
36–40. Ans. 13–14 (citing Stinson ¶¶ 50, 58); Non-Final Act. 10–11 (citing
Stinson ¶¶ 23, 48–50, Figs. 7–8).
Appellant argues the Examiner does not map the limitations recited in
claims 36–40 with any “rhyme or reason” and, for example, claim 38
requires an electronic image classifier uses a noise based model to identify
conditions of building elements, whereas Stinson merely teaches a
photographer tagging photos. Appeal Br. 18; Reply Br. 12–13. We disagree
with Appellant.
The Examiner makes a new finding in the Answer, which Appellant
does not rebut. Compare Ans. 13–14 (citing Stinson ¶¶ 50, 58); Reply Br.
12–13, with Non-Final Act. 10–11 (citing Stinson ¶¶ 23, 48–50, Figs. 7–8);
Appeal Br. 18.
Regarding Appellant’s argument pertaining to claims 36, 37, 39, and
40, in order to rebut a prima facie case of unpatentability, Appellant must
point out the supposed Examiner errors distinctly and specifically, and the
specific distinctions believed to render the claims patentable over the applied
references. See 37 C.F.R. § 41.37(c)(1)(iv) (2018); see also Lovin, 652 F.3d
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at 1357; cf. Baxter Travenol Labs., 952 F.2d at 391. Appellant fails to rebut
the Examiner’s findings pertaining to claims 36, 37, 39, and 40 distinctly
and specifically.
Accordingly, we sustain the Examiner’s rejection of claims 36–40
under § 103.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–40 101 Eligibility 1–40
1–34 103 Stinson,
Shneiderman,
Loveland
1–9, 14–34 10–13
35–40 103 Stinson, Loveland 35–40
Overall
Outcome
1–40