Lawrence R. Duthler et al.

Patent Trials and Appeals Board

Feb 4, 2020

11687464 - (D) (P.T.A.B. Feb. 4, 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.
11/687,464 03/16/2007 Lawrence R. Duthler 35286-00004 8239
35161 7590 02/04/2020
DICKINSON WRIGHT PLLC
1825 EYE ST., NW
SUITE 900
WASHINGTON, DC 20006
EXAMINER
KOLOSOWSKI-GAGER, KATHERINE
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
02/04/2020 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):
dwpatents@dickinsonwright.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAWRENCE R. DUTHLER and THOMAS W. CRONKRIGHT II
Appeal 2019-000168
Application 11/687,464
Technology Center 3600
BEFORE KALYAN K. DESHPANDE, JASON J. CHUNG, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, 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 1–23, 25–40, and 42–45. See Final
Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as MOBILE TITLE
LLC. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
The claims are directed to a mobile system and method for processing
real estate transactions. Spec. ⁋ 3. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A method for processing real estate transactions, comprising
the steps of:
preparing transaction documents for a first transaction and
a second transaction at an office location having an office
network;
storing electronically on the office network the prepared
transaction documents for the first transaction and the second
transaction from said step of preparing transaction documents;
providing power to a mobile closing unit included in a
housing, the mobile closing unit including a printer connected to
a router having a wireless card for connecting to the office
network through a wide area network, and a power switch for
controlling power to the mobile closing unit;
automatically connecting the mobile closing unit to the
office network through the wide area network to establish a
wireless and secure encrypted connection while remote from the
office network upon completing said step of providing power to
the mobile closing unit;
automatically receiving with the mobile closing unit the
electronically stored transaction documents relating to the first
transaction from the office network over the secure encrypted
connection with the wide area network and at a location remote
from the office location after completing said step of
automatically connecting the mobile closing unit to the office
network;
automatically printing the received transaction documents
relating to the first transaction on the printer disposed in the
mobile closing unit and at a location remote from the office
location;
executing the printed transaction documents related to the
first transaction at a first location;
scanning the executed transaction documents relating to
the first transaction using a scanner disposed in the mobile
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closing unit and at a location remote from the office location and
sending the scanned transaction documents over the wide area
network to the office network;
moving the housing from the first location to a second
location and the mobile closing unit electronically receiving at a
location remote from the office location the electronically stored
transaction documents relating to the second transaction;
automatically printing on the printer located in the mobile
closing unit and at a location remote from the office location the
transaction documents relating to said second transaction while
performing said step of moving the housing from the first
location to the second location;
executing the printed transaction documents relating to the
transaction at the second location; and
scanning the executed transaction documents relating to
the second transaction on the scanner located in the mobile
closing unit and at a location remote from the office location and
sending the executed transaction documents relating to the
second transaction over the wide area network to the office
network.

REJECTION
Claims 1–23, 25–40 and 42–45 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to patent-ineligible subject matter.
Final Act. 3–6.
Claims 1–22, 25–39, and 42–45 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Schaffer et al. (US
2006/0259420 A1; published Nov. 16, 2006) (“Schaffer”), in view of
Peterson (Samantha Peterson, Home Loan Deals on Wheels, Inman Real
Estate News July 21, 2004), and George et al. (US 6,644,546 B2; issued
Nov. 11, 2003) (“George”). Final Act. 7–31.
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Claims 23 and 40 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Schaffer, Peterson, George, and
Official Notice. Final Act. 31–35.

ANALYSIS
Rejection of Claims 1–23, 25–40 and 42–45 under 35 U.S.C. § 101
Appellant argues that the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter is in error.
Appeal Br. 24. Appellant argues claims 1–20 as a group. Appeal Br. 33.
Given our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the § 101
rejection of claims 1–20 based on representative claim 1. Appellant argues
claims 21–30 and 38 as a group. Appeal Br. 34 –36. We decide the § 101
rejection of claims 21–30 and 38 based on representative claim 21.
Appellant argues claims 31–37, 39, 40, and 42–45 as a group. Appeal Br.
33–34. We decide the § 101 rejection of claims 31–37, 39, 40, and 42–45
based on representative claim 31.

Legal Standard
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the Office published revised guidance for
evaluating subject matter eligibility under 35 U.S.C. § 101, specifically with
respect to applying the Alice framework. USPTO, 2019 Revised Patent
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Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Office
Guidance”). If a claim falls within one of the statutory categories of patent
eligibility (i.e., a process, machine, manufacture, or composition of matter)
then the first inquiry is whether the claim is directed to one of the judicially
recognized exceptions (i.e., a law of nature, a natural phenomenon, or an
abstract idea). Alice, 573 U.S. at 217. As part of this inquiry, we must “look
at the ‘focus of the claimed advance over the prior art’ to determine if the
claim’s ‘character as a whole’ is directed to excluded subject matter.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed.
Cir. 2016) (citation omitted).
Per Office Guidance, this first inquiry has two prongs of analysis:
(i) does the claim recite a judicial exception (e.g., an abstract idea), and
(ii) if so, is the judicial exception integrated into a practical application.
Office Guidance 84 Fed. Reg. at 54. Under the Office Guidance, if the
judicial exception is integrated into a practical application, see infra, the
claim is patent eligible under § 101. Office Guidance 84 Fed. Reg. at 54–55.
If the claim is directed to a judicial exception (i.e., recites a judicial
exception and does not integrate the exception into a practical application),
the next step is to determine whether any element, or combination of
elements, amounts to significantly more than the judicial exception. Alice,
573 U.S. at 217; Office Guidance 84 Fed. Reg. at 56. 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 (citation omitted).
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To summarize, under the current Office Guidance, 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); and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(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.
See Office Guidance.

Step 1
Claims 1 and 21 are method (process) claims. Claim 31 is a system
(machine) claim. Thus, the claims fall within one of the statutory categories
of § 101. See Office Guidance, 84 Fed. Reg. at 53–54 (citing MPEP
§§ 2106.03, 2106.06).

Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner concluded that claims 1, 21, and 31 are directed to “the
fundamental economic practices of creating a contractual relationship
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through the purchase of real estate,” which is a certain method of organizing
human activity, and thus an abstract idea. Final Act. 3–4.
Consistent with Appellant’s description of the claims, we that the
claims recite processing real estate transactions, which are fairly
characterized as a fundamental economic practice, and which fall into the
certain methods of organizing human activity category of abstract ideas. See
Office Guidance, 84 Fed. Reg. at 52. The claims recite commercial
interactions such as agreements in the form of contracts, sales activities or
behaviors, and business relations. In particular the claims are directed to a
transaction processing method/system for facilitating transactions between
the buyer and the seller. The claims relate to financial or fundamental
economic practices, wherein the language of automating transactions
between buyers and sellers and maintaining and processing terms and
conditions relating the buyer seller issuer and acquirer, relates to creating a
contract (or binding agreement) between people. Courts have identified
similar concepts relating to economy and commerce such as agreements
between people in the form or contracts, legal obligations and business
relations as abstract ideas. See Ans. 4 (citing buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350 (Fed. Cir. 2014).
Appellant does not challenge the Examiner’s determination that the
claims recite an abstract idea. See Appeal Br. 28. Rather, Appellant argues
that the claims contain additional elements that amount to “significantly
more” than the abstract idea. See Reply Br. 2.
Because we agree with the Examiner that representative claims 1, 21,
and 31 recite an abstract idea, we proceed to Prong Two of Step 2A to
determine for each claim whether the idea is integrated into a practical
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application. If so, the claim as a whole would not be “directed to” merely an
abstract idea.

Step 2A(ii): Judicial Exception Integrated into a Practical Application?
Because we determined that claims 1, 21, and 31 recite a patent-
ineligible concept, we next determine whether the recited judicial exception
is integrated into a practical application of that exception by (a) identifying
whether there are any additional elements recited in the claim beyond the
judicial exception(s); and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. See
Revised Guidance at 55 n.24. The Examiner determined that the additional
elements include the limitations “office network,” “mobile closing unit,”
“printer,” “router,” “wireless card,” “power switch,” “wide area network,”
and using “encryption.” Final Act. 5; Ans. 5.
The Examiner determined that none of the additional limitations is
sufficient to amount to significantly more than the judicial exception
because each is a generic computer element that does not meaningfully limit
the abstract idea. Id. We agree with the Examiner. According to the
Specification, the “mobile closing unit 24 when used with real estate
transactions generally includes a printer 28, a router 40 having a wireless
Internet card, an antenna 48, an optional stand-alone magnetic check scanner
80, and an optional computer 32.” Spec. ¶ 25 (bolding omitted). The
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Specification further describes that the “computer 32 may be any laptop or
desktop computing device.” Spec. ¶ 32 (bolding omitted).
In addition, “printing” is an example of insignificant post-solution
activity, which is not sufficient to transform the abstract idea into patent-
eligible subject matter. MPEP § 2106.05(g). Also, the “receiving” step in
claim 1 amounts to merely insignificant extra-solution activity that does not
add significantly more to the abstract idea. Office Guidance 55, n.31.
Appellant argues that “key distinguishing features of at least
automatically sending and printing of documents to the mobile unit over a
secure connection while the mobile closing unit is traveling is novel over
the prior art” and is “sufficient to ensure that the [[claim]] amounts to
significantly more than a patent upon the abstract idea.” Appeal Br. 26
(citing Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014)); see also
Appeal Br. 29, Reply Br. 2–3.
Appellant’s argument is not persuasive.2 The novelty of any element
or steps in a process, or even of the process itself, is of no relevance in

2 We agree with the Examiner that the plain language of at least claims 1 and
21 does not recite or require “automatically sending and printing of
documents to the mobile unit over a secure connection while the mobile
closing unit is traveling.” See Ans. 7. Claim 1 recites “automatically printing
the received transaction documents relating to the first transaction on the
printer disposed in the mobile closing unit and at a location remote from the
office location.” Appeal Br. 50. Claim 1 also recites “automatically printing
on the printer located in the mobile closing unit and at a location remote
from the office location the transaction documents relating to said second
transaction while performing said step of moving the housing from the first
location to the second location.” Id. at 51. Neither limitation on its face
requires a secure connection while printing, and Appellant has not persuaded
us that they do. Claim 21 recites similar limitations. Id. at 54–55.
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determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter. Diamond v. Diehr, 450 U.S.
175, 188–89 (1981). Our reviewing court guides that “[e]ligibility and
novelty are separate inquiries.” Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see also Affinity
Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016)
(holding that “[e]ven assuming” that a particular claimed feature was novel
does not “avoid the problem of abstractness”). Moreover, the features that
Appellant identifies (sending and printing information) are insignificant
extra-solution activity and cannot integrate the abstract idea into a practical
application. See Office Guidance at 55 n.31; MPEP § 2106.05(g).
Appellant also argues that the recited feature of automatically printing
over a secure connection while the mobile closing unit is traveling “can save
time for the mobile operator and improves the security, quality control, and
efficiency for mobile closings using a mobile closing unit.” Appeal Br. 29;
see also id. at 26. Appellant further argues that the feature “improves the
efficiency as well as the likelihood that a real estate closing will proceed as
scheduled.” Id. at 31.
We are not persuaded by Appellant’s arguments that the claims are
directed to an improvement in the functioning of computers or other
technology or technical field. The improvements cited by Appellant are
improvements to the abstract idea itself, which merely uses the computer
elements as a tool to carry out the abstract idea. In other words, improving
real estate closing transactions solves a business problem rather than a
technical one. See, e.g., MPEP § 2106.06(b) (summarizing cases that were
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eligible as improvements to technology or computer functionality instead of
abstract ideas).
Appellant also alleges the claims are patent-eligible because their
practice does not preempt practice by others. Appeal Br. 30. Although
preemption may signal patent ineligible subject matter, the absence of
complete preemption “does not demonstrate patent eligibility . . . [w]here a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” 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) (“that 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”).
Considering claims 1, 21, and 31 as a whole, then, Appellant’s
invention lacks a technical solution to a technical problem. The claims as a
whole merely use instructions to implement the abstract idea on a computer
or, alternatively, merely uses a computer as a tool to perform the abstract
idea. Here, the additional limitation(s) do not integrate the judicial exception
into a practical application. More particularly, the claims do not recite (i) an
improvement to the functionality of a computer or other technology or
technical field (see MPEP § 2106.05(a)); (ii) a “particular machine” to apply
or use the judicial exception (see MPEP § 2106.05(b)); (iii) a particular
transformation of an article to a different thing or state (see MPEP
§ 2106.05(c)); or (iv) any other meaningful limitation (see MPEP
§ 2106.05(e)). See Office Guidance 84 Fed. Reg. at 55. Rather, claims 1, 21,
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and 31 recite an abstract ideas as identified in Step 2A(i), supra, and none of
the limitations integrates the judicial exception into a practical application.
Therefore, because the abstract idea is not integrated into a practical
application, we conclude that the claims are directed to the judicial
exception.

Step 2B — “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs of
Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (quoting
claims of Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)). We look to see whether there are any “additional features” in the
claims that constitute an “inventive concept,” thereby rendering the claims
eligible for patenting even if they are directed to an abstract idea. Alice, 573
U.S. at 221. Those “additional features” must be more than “well-
understood, routine, conventional activity.” Mayo, 566 U.S. at 79.
The Examiner determined that the recited office network and wide
area network are used simply for the sending and receiving of documents.
Ans. 5. Courts have recognized that receiving or transmitting data over a
network, in a manner similar to that recited in the claims, is well-understood,
routine and conventional. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015) (sending messages over a network); buySAFE,
765 F.3d at 1355 (computer receives and sends information over a network).
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The Examiner also found that Appellant’s Specification describes the mobile
closing unit as a computing device including a conventional printer and a
conventional router, and as capable of printing and downloading documents.
Ans. 5 (citing Spec. Fig. 3, ¶¶ 13, 23).
Appellant argues that “an analysis of the additional limitations of
Claim 1 as an ordered combination results in an invention as a whole which
amounts to significantly more than just ‘well-understood, routine and
conventional activities previously known to the industry.’” Appeal Br. 27.
Appellant again relies on “automatically printing and scanning documents
while the mobile closing unit is traveling” as the inventive concept in the
claims, relying on the teaching of the prior art cited by the Examiner in the
rejections of the claims under 35 U.S.C. § 103(a). Id. at 27–29.
Having analyzed the claim elements “as an ordered combination,” in
addition to individually, we are not persuaded by Appellant’s argument that
the Examiner erred. Appellant does not direct our attention to anything in the
Specification that indicates the computer components perform anything
other than well-understood, routine, and conventional functions. See
buySAFE, 765 F.3d at 1355 (“That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive”); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607,
614 (Fed. Cir. 2016) (server that receives data, extracts classification
information from the received data, and stores the digital images insufficient
to add an inventive concept); Alice, 573 U.S. at 225–26 (receiving, storing,
sending information over networks insufficient to add an inventive concept).
Because the Specification describes the additional elements in general
terms, without describing the particulars, we conclude the claim limitations
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may be broadly but reasonably construed as reciting conventional computer
components and techniques, particularly in light of Appellant’s
Specification, as cited above. See Berkheimer Memo3 § III.A.1; Spec. ¶¶ 20–
33. We conclude claims 1, 21, and 31 do not have an inventive concept
because the claims, in essence, merely recite various computer-based
elements along with no more than mere instructions to implement the
identified abstract idea using the computer-based elements.
Because the claims fail under both the Step 2A and Step 2B analyses,
we sustain the Examiner’s § 101 rejection of representative independent
claims 1, 21, and 31 and grouped claims 2–20, 22–30, 32–40, and 42–45, not
argued separately with particularity.

Rejection of Claims under 35 U.S.C. § 103(a)
We have reviewed the rejections of claims 1–23, 25–40, and 42–45 in
light of Appellant’s arguments that the Examiner erred. We have considered
in this decision only those arguments Appellant actually raised in the Briefs.
Any other arguments Appellant could have made, but chose not to make, in
the Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Appellant argues claims 1–20, 32–37, 39, 40, and 42–45 as a group.
Appeal Br. 41. We decide the appeal of the § 103(a) rejections of claims 2–

3 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018) (emphasis omitted) (explaining that a
specification that describes additional elements “in a manner that indicates
that the additional elements are sufficiently well-known that the
specification does not need to describe the particulars of such additional
elements to satisfy 35 U.S.C. § 112(a)” can show that the elements are well
understood, routine, and conventional).
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20, 32–37, 39, 40, and 42–45 based on independent claim 1. Appellant
argues claims 21–23, 25–30, and 38 as a separate group. Id. at 47. We decide
the appeal of the § 103(a) rejections of claims 22, 23, 25–30, and 38 based
on independent claim 21.
Appellant’s arguments are not persuasive of error. We agree with and
adopt as our own the Examiner’s findings of facts and conclusions as set
forth in the Answer and in the Action from which this appeal was taken. We
provide the following explanation for emphasis.

Claims 1–20, 32–37, 39, 40, and 42–45
With respect to representative independent claim 1, Appellant
contends that the Examiner erred because the cited prior art does not teach or
suggest the limitations “the limitations of ‘automatically establishing a
secure connection between the home office network and the mobile unit’
and ‘automatically receiving the stored set of prepared documents at the
mobile unit over the established secure connection,’” as recited in claim 1.
Appeal Br. 37. Appellant argues that Peterson does not teach or suggest a
secure connection. Id.
We are not persuaded that the Examiner erred. Appellant attacks
Peterson individually, even though the Examiner relied on the combination
of Schaffer, Peterson, and George when rejecting claim 1. Non-obviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The test for
obviousness is not whether the claimed invention is expressly suggested in
any one or all of the references, but whether the claimed subject matter
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would have been obvious to those of ordinary skill in the art in light of the
combined teachings of those references. See In re Keller, 642 F.2d 413, 425
(CCPA 1981).
Here, the Examiner relied on Schaffer as teaching the secured
connection. Ans. 11 (citing Schaffer ¶¶ 39–43). The Examiner also relied on
Schaffer for creating, modifying and securely sending loan execution
documents. Id. The Examiner relied on Peterson for a mobile closing unit
that is able to connect wirelessly to modify and update documents. Id.
Because Appellant has not addressed the rejection actually made by the
Examiner, we are not persuaded that the Examiner erred.
Appellant further argues that the cited portions of George do not teach
or suggest automatically printing received documents while the mobile unit
is traveling or in route, as claim 1 requires. Appeal Br. 39. In particular,
Appellant argues that George’s teaching of storing information in memory is
insufficient to teach or suggest printing while the recited mobile closing unit
is traveling. See id. Appellant further argues that the POS terminals in
George are stationary units, and the Examiner did not conclude it would
have been obvious to modify Peterson’s mobile closing unit to print
documents automatically while the mobile closing unit is traveling. Id. at
39–40.
Appellant has not persuaded us that the Examiner erred. The
Examiner first emphasized that the disputed limitations read as follows:
automatically receiving with the mobile closing unit the
electronically stored transaction documents relating to the first
transaction from the office network over the secure encrypted
connection….[sic] at a location remote from the office
location….,[sic]
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automatically printing on the printer located in the mobile
closing unit and at a location remote from the office location the
transaction documents relating to said second transaction while
performing said step of moving the housing from the first location to
the second location.
Ans. 10. The Examiner interpreted these limitations as requiring that the
mobile closing unit receives the sent documents for the transaction(s) when
the device is located anywhere but the office location. Id. The Examiner
concluded that, according to claim 1, the documents are received at the
mobile unit prior to the movement of the unit from one location to a next,
but the documents are printed from the local storage on the mobile unit
during the transport. Id. The Examiner further concluded that the printing
step does not require nor allude to any connectivity to the network. Id. The
Examiner also concluded that the term “secure encrypted connection” means
any form of network with security measures. Id.
Appellant has not persuaded us that the Examiner’s claim
interpretation is overly broad, unreasonable, or inconsistent with the
Specification. We agree with the Examiner that the “receiving” step requires
the secure encrypted connection, but the disputed “printing” step does not.
We also agree with the Examiner that claim 1 does not require that the
documents must be sent or received while the mobile unit is moving, just
that the printing occurs en route.
The Examiner found that Schaffer teaches or suggests sending
documents pertaining to real estate transactions via a secured network.
Ans. 12–13 (citing Schaffer ¶¶ 39–43). The Examiner further found that
Peterson teaches a as Peterson teaches a mobile mortgage bus that has a
wireless network connection. Id. at 13 (citing Peterson at 2). The Examiner
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also found that George teaches printing remotely, as well as storing data at a
printer for later use. Id. The Examiner concluded that it would have been
obvious to one of ordinary skill in the art at the time of the invention to
include a mobile unit with wireless capability, as taught by Peterson, in the
mortgage document execution of Schaffer, which uses a secure connection,
and further obvious that the mobile mortgage execution of Schaffer/Peterson
would include remote printing capability as taught by George. See id. at 14.
Appellant’s argument that Peterson does not disclose explicitly
printing received documents while the mobile unit is traveling or in route is
not persuasive. Reply Br. 6. As we explained above, the test for obviousness
is not whether the claimed invention is suggested expressly in any one or all
of the references, but whether the claimed subject matter would have been
obvious to those of ordinary skill in the art in light of the combined
teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCPA
1981). Appellant further argues that the printing in George occurs on a
stationary point-of-sale unit. Reply Br. 6. Non-obviousness, however, cannot
be established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. See In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, Appellant has not rebutted
the Examiner’s conclusion that it would have been obvious to an artisan of
ordinary skill that the printing of George, which occurs remotely from the
initiation of the transaction, would occur on the mobile mortgage unit of
Peterson during travel to the site of document execution. Ans. 13.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Schaffer, Peterson, and George teaches or
suggests the disputed limitations of representative claim 1.
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Accordingly, we sustain the Examiner’s § 103(a) rejection of
independent claim 1, as well as the Examiner’s § 103(a) rejection of
independent claims 35, 39, 40, 42, and 44, grouped with claim 1. Appeal Br.
41. We also sustain the Examiner’s § 103(a) rejection of dependent claims
2–20, 32–34, 36, 37, 43, and 45, also argued as a group with claim 1. Id.

Claims 21–23, 25–30, and 38
With regard to independent claim 21, Appellant contends the
Examiner erred because “communication with the mobile unit in Peterson
does not occur over a secure encrypted connection” or a wide area network.
Appeal Br. 41–42. Appellant argues:
Peterson does not expressly teach establishing a secure
encrypted wireless connection between a home office and the
mobile location unit, particularly because Peterson fails to even
disclose a home office in the first place. Thus, it necessarily
follows that Peterson fails to disclose any communications from
a home office to a mobile location unit, whether over a secured
encrypted connection or otherwise.
Reply Br. 8.
We are not persuaded that the Examiner erred. Again, Appellant
attacks Peterson individually, although the Examiner relied on the combined
teachings of Schaffer, Peterson, and George when rejecting claim 21. The
Examiner found that Schaffer teaches that documents are sent via a secured
communication network between one or more parties. Ans. 14. The
Examiner also found that Peterson teaches that the mobile unit has wireless
capability. Id. The Examiner concluded that it would have been obvious to
one of ordinary skill in the art at the time of the invention that the wireless
connection in Peterson would be secured to the level of at least standard
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Wi-Fi protocol at the time (i.e., the 802.11 standard, described in
Appellant’s Specification at ¶ 32), which includes WAP
protection/encryption measures. Ans. 14. The Examiner further concluded it
would have been obvious that the communication network in Peterson
would be secured to the same extent of that in Schaffer. Id.
Appellant has not rebutted persuasively the Examiner’s factual
findings and legal conclusions. We find that it would have been within the
level of skill of one skilled in the art to combine the known techniques in
Schaffer and Peterson to use the secured network of Schaffer, used to send
documents between one or more parties, with the wireless connection of
Peterson. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f
a technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” (citations omitted)). We are not persuaded that
combining the respective familiar elements of the cited references in the
manner proffered by the Examiner would have been “uniquely challenging
or difficult for one of ordinary skill in the art” at the time of Appellant’s
invention. Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418).
Next, Appellant argues that the Examiner has not explained
sufficiently how or why George teaches the “automatic” receiving and
printing of documents as required by Claims 21 and 38. Appeal Br. 44.
We are not persuaded of Examiner error. Appellant has not
persuasively rebutted the Examiner’s finding or explained why the cited
portions of the prior art do not teach or suggest the disputed limitations. As
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stated by the Federal Circuit, Rule 41.37 “require[s] 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.” In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Moreover, the
Examiner found that Schaffer teaches “automatically receiving” documents.
Final Act. 16 (citing Schaffer Fig. 4, ¶¶ 27, 39–40). The Examiner found that
George teaches or suggests “automatically printing.” Id. (citing George Fig.
2A and related text). The Specification describes receiving and printing
“automatically,” as recited in the disputed limitations of claim 21, as
follows:
Once connected to the office network 36, the printer 28 will
automatically receive and print pending and new print jobs sent
from the office network 36. An employee working at the office
network 36 can send a job to the printer 28 located in the
mobile closing unit 24 in the same way that print jobs are sent
to printers physically residing in the employee’s office.
Spec. ¶ 30 (emphasis added) (bolding omitted). Thus, the broadest,
reasonable interpretation of “automatically” in claim 21 is sufficiently broad
to cover receiving and printing on a networked printer, where print jobs are
initiated from an employee (i.e., a person) elsewhere on the network. In light
of Appellant’s description of automatically receiving and printing in the
Specification, Appellant has not presented persuasive arguments sufficient to
rebut the Examiner’s findings that the printer taught in George automatically
receives and prints, as claim 21 requires. See Ans. 12.
Appellant further argues that the Examiner did not sufficiently explain
why one of ordinary skill in the art would modify Schaffer and Peterson to
incorporate the “automatic” receiving and printing of documents taught by
George. Appeal Br. 44.
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We disagree. The Examiner explained that it would have been
obvious to one of ordinary skill in the art to modify Schaffer in view of
Peterson by adopting teachings of George “to improve means for supporting
service providers on the road by enabling service providers to render
services at customer locations; increase revenue by rendering professional
services to customers who are not able to commute.” Final Act. 15. Thus, the
Examiner provided “articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006).
Appellant next argues that the Examiner engaged in impermissible
hindsight in finding that the “wireless technology” taught in Peterson
“includes the mobile unit having a router and wireless card for automatically
and securely connecting a printer to an office network via a wide area
network and a secure encrypted connection.” Appeal Br. 43.
We are not persuaded by Appellant’s hindsight argument. Appellant
has not identified any knowledge relied upon by the Examiner that was
gleaned only from Appellant’s disclosure and that was not otherwise within
the level of ordinary skill in the art at the time of invention. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Nor has Appellant
provided objective evidence of secondary considerations, which “operates as
a beneficial check on hindsight.” Cheese Sys., Inc. v. Tetra Pak Cheese and
Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Schaffer, Peterson, and George teaches or
suggests the disputed limitations of claim 21.
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Appellant next contends that George is not analogous art. Appeal
Br. 45. We disagree.
“A reference qualifies as prior art for an obviousness determination
under § 103 only when it is analogous to the claimed invention.” In re Klein,
647 F.3d 1343, 1348 (Fed. Cir. 2011) (citing Innovention Toys, LLC v. MGA
Entm’t, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011), and In re Bigio, 381 F.3d
1320, 1325 (Fed. Cir. 2004) (citation omitted)). “Two separate tests define
the scope of analogous art: (1) whether the art is from the same field of
endeavor, regardless of the problem addressed and, (2) if the reference is not
within the field of the inventor’s endeavor, whether the reference still is
reasonably pertinent to the particular problem with which the inventor is
involved.” Id. (quoting In re Bigio, 381 F.3d at 1325). A reference is
reasonably pertinent if, even though it may be in a different field from that
of the inventor’s endeavor, it is one which, because of the matter with which
it deals, logically would have commended itself to an inventor’s attention in
considering his problem.” In re Clay, 966 F. 2d 656, 659 (Fed. Cir. 1992).
Appellant describes George’s field of endeavor as “mobile systems
and methods for remotely processing real estate transactions.” Appeal
Br. 46. The Examiner explained that both the claimed invention and the
invention in George are directed to “the execution of a purchase,
specifically, the paper trail required to document, execute, and record its
occurrence.” Ans. 15. Considering the similarities and differences in
structure and function of the inventions disclosed in George and the current
application, we agree with the Examiner that Appellant’s view of George’s
field of endeavor is unnecessarily narrow. See Ans. 15. It is not required that
the prior art be specifically applied to a specific type of transaction. See In re
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Ellis, 476 F.2d 1370, 1372 (CCPA 1973); In re Chaganti, 554 F. App’x 917
(Fed. Cir. 2014) (a reference need not disclose every limitation of the
claimed invention to fall within the same field of endeavor as the claimed
invention).
We therefore conclude, for example, that an inventor considering a
way to remotely print paperwork required for a purchase would naturally
look to references that print such documents. Accordingly, we are not
persuaded that the Examiner erred in using George as prior art when
rejecting claims under § 103(a).
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Schaffer, Peterson, and George teaches or
suggests the disputed limitations of representative claim 21.
Accordingly, we sustain the Examiner’s § 103(a) rejection of
independent claim 21, as well as the Examiner’s § 103(a) rejection of
independent claim 38, grouped with claim 21. Appeal Br. 47. We also
sustain the Examiner’s § 103(a) rejection of dependent claims 22, 23, and
25–30, also argued as a group with claim 21. Id.

CONCLUSION
We affirm the decision of the Examiner rejecting claims 1–23, 25–40,
and 42–45.
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CONCLUSION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–23, 25–
40, 42–45
101 Judicial exception 1–23, 25–
40, 42–45

1–22, 25–
39, 42–45
103(a) Schaffer, Peterson,
George
1–22, 25–
39, 42–45

23, 40 103(a) Schaffer, Peterson,
George, Official Notice
23, 40
Overall
Outcome:
1–23, 25–
40, 42–45

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