John Treadwell et al.

Patent Trials and Appeals Board

Nov 3, 2020

13164128 - (D) (P.T.A.B. Nov. 3, 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.
13/164,128 06/20/2011 John D. Treadwell 880417-0102-US00 1228
134795 7590 11/03/2020
MICHAEL BEST & FRIEDRICH LLP (DC)
790 N WATER ST
SUITE 2500
MILWAUKEE, WI 53202
EXAMINER
WEISENFELD, ARYAN E
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
DCipdocket@michaelbest.com
nbenjamin@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN D. TREADWELL, ERIC ROSENBLATT,
HAMILTON FOUT, ALEXEI M. KISSELEV, and ROBERT MEALEY
Appeal 2020-003097
Application 13/164,128
Technology Center 3600
Before JEREMY J. CURCURI, JUSTIN BUSCH, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 30–48. Claims 1–29 are cancelled. We
have jurisdiction under 35 U.S.C. § 6(b). A telephonic oral hearing took
place on October 15, 2020, and a copy of the transcript will be placed in the
record in due course.
We affirm-in-part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Fannie
Mae. Appeal Br. 2.
Appeal 2020-003097
Application 13/164,128

2
CLAIMED SUBJECT MATTER
The claims are directed to modeling comparable properties where the
subject property is a condominium property. Claim 30, reproduced below, is
illustrative of the claimed subject matter:
30. A non-transitory computer-readable storage medium
comprising instructions that, when executed by an electronic
processor, cause the electronic processor to perform a set of
operations, the set of operations comprising: accessing,
with a property data access module, property data describing
properties that include condominium properties and non-
condominium properties;
identifying, with a condo property identification module,
which of the properties are the condominium properties by:
for each of the properties, searching a plurality of
distinct data sources for condominium classifications or
non-condominium classifications,
for each of the properties, based on results of the
searching, preliminarily classifying a condominium status
and assigning a confidence level for the condominium
status that has been preliminarily classified,
for at least one of the properties that is assigned a
low confidence level, increasing the confidence level of
the at least one of the properties based on a determination
that a root address identifier of the at least one of the
properties matches a root address identifier of another
property that is classified as a condominium property and
assigned a high confidence level, and
after the increasing of the confidence level of the at
least one of the properties, identifying which of the
properties are the condominium properties based on the
condominium statuses that have been preliminarily
classified and the confidence levels that have been
assigned;
determining, with a regression module, coefficients of a
hedonic equation that models a relationship between price and
Appeal 2020-003097
Application 13/164,128

3
explanatory variables, the explanatory variables including at
least one variable that is specific to condominium property
assessment, by regressing only the property data of the properties
that were identified as the condominium properties;
identifying, with the property data access module, a
subject condominium property;
identifying, with an adjustment and weighting module, a
subset of the properties as candidate comparable properties for
the subject condominium property by excluding unsuitable ones
of the properties based on predefined exclusion rules, calculating
an economic distance between each of the candidate comparable
properties and the subject condominium property using the
coefficients of the hedonic equation, and ranking the candidate
comparable properties based on respective economic distances
from the subject condominium property;
generating, with a user interface module, a graphical user
interface including a map image area and a corresponding
property grid area, the corresponding property grid area
including information regarding the subject condominium
property and the sub set of properties as candidate comparable
properties for the subject condominium property; and
controlling, with the user interface module, a display to
display the graphical user interface.
Appeal Br. 45–46 (Claims Appendix).
REFERENCES
The Examiner relies upon the following references as prior art. :
Name Reference Date
Jost US 5,361,201 Nov. 01, 1994
Cheetham US 6,178,406 B1 Jan. 23, 2001
Marshall US 2005/0086283 A1 Apr. 21, 2005
Budlong US 2011/0055091 A1 Mar. 03, 2011
Stinson US 8,046,306 B2 Oct. 25, 2011
Newcomer US 8,064,703 B2 Nov. 21, 2011
Appeal 2020-003097
Application 13/164,128

4
Richard J. Cebula, “The Hedonic Pricing Model Applied to the Housing
Market of the City of Savannah and Its Savannah Historic Landmark
District,” The Review of Regional Studies, Vol. 39, No. 1, pp. 9–22 (2009)
(“Cebula”).
REJECTIONS
Claims 30–48 stand rejected under 35 U.S.C. § 112, first paragraph,
for lack of written description. Final Act. 4–10.
Claims 30–48 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 10–12.
Claims 30–32, 34, and 37–48 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Stinson, Jost, Newcomer, Cheetham, and Cebula.
Final Act. 12–27.
Claim 33 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stinson, Jost, Newcomer, Cheetham, Cebula, and
Budlong. Final Act. 27–29.
Claims 35 and 36 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Stinson, Jost, Newcomer, Cheetham, Cebula, and
Marshall. Final Act. 29–33.
ISSUES
First Issue: Has the Examiner erred in finding the limitations
for each of the properties, based on results of the
searching, preliminarily classifying a condominium status
and assigning a confidence level for the condominium
status that has been preliminarily classified,
for at least one of the properties that is assigned a
low confidence level, increasing the confidence level of
the at least one of the properties based on a determination
that a root address identifier of the at least one of the
properties matches a root address identifier of another
Appeal 2020-003097
Application 13/164,128

5
property that is classified as a condominium property and
assigned a high confidence level, and
after the increasing of the confidence level of the at
least one of the properties, identifying which of the
properties are the condominium properties based on the
condominium statuses that have been preliminarily
classified and the confidence levels that have been
assigned,
as recited in the independent claims, lack support in the Specification?
Second Issue: Has the Examiner erred in concluding the limitation
“for at least one of the properties that is assigned a low confidence level,”
renders claims 30, 42, 43, and 44 indefinite?
Third Issue: Has the Examiner erred in concluding claim 44 is
indefinite because the limitations invoke 35 U.S.C. § 112, sixth paragraph,
but Appellant does not identify corresponding structure in the Specification?
Fourth Issue: Has the Examiner erred in finding the cited references
teach or suggest “the explanatory variables including at least one variable
that is specific to condominium property assessment,” as recited in claim
30?
ANALYSIS
First Issue
The Examiner rejects the independent claims for lack of written
description. The Examiner finds that for the limitation “for each of the
properties, based on results of the searching, preliminarily classifying a
condominium status and assigning a confidence level for the condominium
status that has been preliminarily classified,” the Specification “does not
sufficiently disclose how a preliminary classification is made.” Final Act. 6
(emphasis omitted).
Appeal 2020-003097
Application 13/164,128

6
Similarly, the Examiner finds the limitation “for at least one of the
properties that is assigned a low confidence level, increasing the confidence
level of the at least one of the properties . . .” lacks written description
because the Specification does “not disclose how the confidence level is
increased.” Final Act. 7. The Examiner also finds the limitation “after the
increasing of the confidence level . . . identifying which of the properties are
condominium properties” lacks support because “the Specification does not
disclose what the confidence level is increased to, and does not provide any
clear examples of actually making a classification of which properties are
condominium properties based on this.” Final Act. 7–8.
Appellant argues the Examiner has erred because paragraphs 126–144
and Figures 1–6B of the Specification support the limitations at issue.
Appeal Br. 13. We agree with Appellant.
Paragraph 136 of the Specification describes the use of a database of
condominium classification “which includes various information including
that identifying trusted sources of information, as well as existing
classification information (‘condo’ or ‘not condo’) for identified properties.”
The Specification further describes that the preliminary classification is
performed by accessing the classification information stored in the database,
and assigning the preliminary classification based on the stored data. Spec.
¶ 136 (“The information is accessed 504, and a property is assigned 506 a
preliminary classification (either ‘condo’ or ‘not condo’) and that
assignment is further given a confidence level (‘high,’ ‘medium,’ or ‘low’)
based upon the trusted source information and time series classification
information.”).
Appeal 2020-003097
Application 13/164,128

7
This disclosure provides ample support for the limitation “for each of
the properties, based on results of the searching, preliminarily classifying a
condominium status and assigning a confidence level for the condominium
status that has been preliminarily classified.”
We also agree with Appellant that the Specification supports “for at
least one of the properties that is assigned a low confidence level, increasing
the confidence level of the at least one of the properties.” Paragraph 141 of
the Specification states that “the classification and confidence score may be
adjusted,” and proceeds to detail a process by which a root identifier is used
to adjust both the classification (¶ 142) and the confidence level (¶¶ 143–
145). This description is sufficient to show possession on the part of the
inventor.
We also agree with Appellant that the limitation “after the increasing
of the confidence level . . . identifying which of the properties are
condominium properties” finds support in the Specification. The Examiner
finds that “the Specification does not disclose what the confidence level is
increased to.” Final Act. 7. We disagree, as the Specification describes
three confidence levels—high, medium, and low (¶ 136) and that those
levels may be adjusted (¶ 141), and further explains the process that leads to
those adjustments (¶¶ 143–145). It would have been readily apparent to a
person of ordinary skill in the art that the inventor possessed adjusting the
confidence level from one identified level (such as low) to another identified
level (such as medium). As such, we are persuaded the Examiner erred in
rejecting the claims for lack of written description.
Appeal 2020-003097
Application 13/164,128

8
Second Issue
The Examiner rejects the independent claims as being indefinite
because “in each of the claims, the limitation that begins with ‘for at least
one of the properties that is assigned a low confidence level,’ each provide a
situation that may or may not happen.” Final Act. 10.
Appellant argues the claims recite process limitations which
“inherently require the process limitation to be performed.” Appeal Br. 16
(emphasis omitted). Appellant further argues that because “claim 30 recites
‘for at least one of the properties that is assigned a low confidence level,’”
“the use of ‘that is’ is restrictive,” and “claim 30 inherently requires at least
one of the properties to be assigned a low confidence level. Appeal Br. 16.
The Examiner’s rejection appears to be premised on the notion that
the conditional nature of the assignment of a low confidence level renders
the claim indefinite. Under the precedent of the Board, when construing a
method claim according to its broadest reasonable interpretation, conditional
steps in process claims need not be carried out to be within the scope of the
claim. Ex Parte Schulhauser, Appeal No. 2013-007847, 2016 WL 6277792,
at *4–5 (PTAB April 28, 2016) (“Schulhauser”). Schulhauser further holds
that that “[u]nlike [a method claim], which is written in a manner that does
not require all of the steps to be performed should the condition precedent
not be met, [a system claim] is limited to the structure capable of performing
all the recited functions. Schulhauser, 2016 WL 6277792, at *7. In neither
case, however, did Schulhauser hold that the use of a conditional limitation
rendered the claim indefinite.
Moreover, the rejected claims here are apparatus and device claims.
Under Schulhauser, to the extent any of the recited steps are subject to a
Appeal 2020-003097
Application 13/164,128

9
condition precedent, the claim is properly understood and interpreted as
being limited to a structure capable of performing those steps. As such, we
agree with Appellant that the purportedly conditional nature of the
assignment of a low confidence level does not render the independent claims
indefinite.
Third Issue
The Examiner rejects claim 44 as indefinite because it recites various
“means” limitations which invoke 35 U.S.C. § 112, sixth paragraph, but the
Specification fails to disclose adequate corresponding structure for
performing the recited functions in the claims. Final Act. 10–11.
Appellant argues:
Appellant’s originally-filed specification, in at least paragraphs
[0093]–[0110] and [0134]–[0145] along with FIGS. 1–6B of the
present application, describe the process 200 (including the
process 500 at operation 204) being performed by one or more
of devices 102 or by the server 108, which are the corresponding
structure, material, or acts for performing the entire claimed
function and clearly links the structure, material, or acts to the
function.
Appeal Br. 17.
We are not persuaded of error. Appellant’s broad generalized
identification of the purported corresponding disclosure is insufficient to
show Examiner error in this instance. Appellant points to the process being
performed by generic computer devices or a server. It is well established,
however, that a general purpose computer is not sufficient to serve as the
corresponding structure for a claim limitation invoking § 112, sixth
paragraph. Aristocrat Techs. Austl. PTY Ltd. v. Int’l Game Tech., 521 F.3d
1328, 1337–38 (Fed. Cir. 2008); see also MPEP § 2181(II)(B) (“In cases
involving a special purpose computer-implemented means-plus-function
Appeal 2020-003097
Application 13/164,128

10
limitation, the Federal Circuit has consistently required that the structure be
more than simply a general purpose computer or microprocessor and that the
specification must disclose an algorithm for performing the claimed
function.”). For each recited function in claim 44, therefore, Appellant must
identify a specific algorithm in the Specification for performing that
function. Aristocrat, 521 F.3d at 1333. Appellant’s arguments point to the
processes depicted in Figures 2 and 5 of the Specification. However,
Appellant does not identify which of the steps shown in the figures (or their
associated description in the Specification) correspond to the individual
recited functions in claim 44. As such, Appellant has not shown error in the
Examiner’s rejection, and we sustain the rejection of claim 44 under 35
U.S.C. § 112, second paragraph. Claim 48 depends from claim 44, and
therefore suffers the same infirmities. We, therefore, also sustain the
rejection of dependent claim 48.
Fourth Issue
The Examiner rejects the independent claims as obvious over the
combined teachings of Stinson, Jost, Newcomer, Cheetham, and Cebula.
Final Act. 12–27. Appellant presents several arguments for patentability,
but as set forth below, we need only address one dispositive argument to
reach a decision.
Claim 30 recites the limitation:
determining, with a regression module, coefficients of a hedonic
equation that models a relationship between price and
explanatory variables, the explanatory variables including at
least one variable that is specific to condominium property
assessment, by regressing only the property data of the properties
that were identified as the condominium properties.
Appeal 2020-003097
Application 13/164,128

11
Appeal Br. 45–46 (Claims Appendix) (italics added). Appellant argues the
Examiner has failed to cite anything in the prior art that teaches “the
explanatory variables including at least one variable that is specific to
condominium property assessment.” Appeal Br. 23–24.
The Examiner finds this limitation taught by Figure 2 of Jost, which
depicts a graphical user interface having a data entry form “describing a
property for appraisal.” Final Act. 17. The Examiner explains that “[a]s
shown in Fig. 2 [of Jost], one of those data boxes is ‘Fee’ and
‘Condominium’ boxes. As such, for any condominium being appraised, the
fee will be specific to that condominium.” Final Act. 17–18.
We disagree with the Examiner’s characterization of Jost. The
reference to the “Fee” and “Condominium” boxes shown in Figure 2 relate
to how the subject property is held in ownership. That is, the
“Condominium” box relates to owning a property as a condominium
property (which includes shared ownership of common areas in the
condominium complex), while the “Fee” box relates to fee simple
ownership, which is widely understood to provide full and irrevocable
ownership of the property. As such, the “Fee” shown in Figure 2 is not a
condominium fee, as stated by the Examiner, and consequently, is not a
variable “specific to condominium property assessment.”
We, therefore, do not sustain the rejection of claim 30 under § 103(a),
the remaining independent claims which also recite a similar limitation, and
the remaining rejected claims which depend therefrom.

Appeal 2020-003097
Application 13/164,128

12
CONCLUSION
We affirm-in-part the Examiner’s decision to reject the claims.
More specifically:
We reverse the Examiner’s rejection of claims 30–48 under 35 U.S.C.
§ 112, first paragraph.
We reverse the Examiner’s rejection of claims 30–43, and 45–47
under 35 U.S.C. § 112, second paragraph.
We affirm the Examiner’s rejection of claims 44 and 48 under 35
U.S.C. § 112, second paragraph.
We reverse the Examiner’s rejections under 35 U.S.C. § 103(a).
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
30–48 112, first
paragraph
Written description 30–48
30–48 112, second
paragraph
Indefiniteness 44, 48 30–43,
45–47
30–32,
34, 37–48
103(a) Stinson, Jost,
Newcomer, Cheetham,
Cebula
30–32,
34, 37–48
33 103(a) Stinson, Jost,
Newcomer, Cheetham,
Cebula, Budlong
33
35, 36 103(a) Stinson, Jost,
Newcomer, Cheetham,
Cebula, Marshall
35, 36
Overall
Outcome
44, 48 30–43,
45–47

Appeal 2020-003097
Application 13/164,128

13
TIME PERIOD FOR RESPONSE
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)(1)(iv).
AFFIRMED-IN-PART