Rick L. Leos

Patent Trials and Appeals Board

Feb 26, 2020

13842944 - (D) (P.T.A.B. Feb. 26, 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.
13/842,944 03/15/2013 Rick L. Leos 35542-00100 1762
21611 7590 02/26/2020
SNELL & WILMER LLP (OC)
600 ANTON BOULEVARD
SUITE 1400
COSTA MESA, CA 92626
EXAMINER
CAI, LANCE Y
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
02/26/2020 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):
ipocdocket@swlaw.com
kvakil@swlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICK L. LEOS
Appeal 2018-003540
Application 13/842,944
Technology Center 3600
Before JOHN A. JEFFERY, JENNIFER L. McKEOWN, 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 1–20, which constitute all the claims
pending in this application. 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 Toyota Motor Sales,
U.S.A., Inc. Appeal Br. 4.
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CLAIMED SUBJECT MATTER
The claims are directed to a method for generating vehicle repair
estimate reports based on predictive estimating. Spec. Title. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for generating a vehicle repair estimate report based
on predictive estimating, and transmitting said vehicle repair
estimate report to a client device, comprising the steps of:
(a) providing, by at least one master server, a graphical
user interface to said client device;
(b) requesting, by said at least one master server, vehicle
identification information from said client device via said
graphical user interface;
(c) receiving, by said at least one master server, said
vehicle identification information from said client device via said
graphical user interface;
(d) validating, by said at least one master server and at
least one database, said vehicle identification information;
(e) generating, by said at least one master server and said
at least one database, a listing of major vehicle parts associated
with said vehicle identification information;
(f) transmitting, by said at least one master server, to said
client device via said graphical user interface said listing of major
vehicle parts associated with said vehicle identification
information;
(g) requesting, by said at least one master server, said
client device to select a major vehicle part from said listing, via
said graphical user interface;
(h) receiving, by said at least one master server, said
selected major vehicle part from said client device, via said
graphical user interface;
(i) determining, by said at least one master server and said
at least one database in response to said receiving said selected
major part, stored relevant vehicle repair information relating to
said selected major vehicle part, said relevant vehicle repair
information includes a second vehicle part for which damage is
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likely and replacement is recommended when said selected
major vehicle part is damaged and replacement is desired;
(j) determining, by said at least one master server and said
at least one database, repair instructions for said selected major
vehicle part and said second vehicle part;
(k) generating, by said at least one master server and said
at least one database, said vehicle repair estimate report based on
predictive estimating, wherein said vehicle repair estimate report
comprises a price of said second vehicle part, an indication that
said second vehicle part is a one-time use part, and corresponding
vehicle repair information;
(l) customizing, by said at least one master server and said
at least one database, said vehicle repair estimate report based on
at least one of a preference associated with a recipient of said
vehicle repair estimate report, an attribute associated with said
selected major vehicle part or an attribute associated with said
second vehicle part;
(m) transmitting, by said at least one master server, said
vehicle repair estimate report to said client device via said
graphical user interface; and
(n) providing, by said at least one master server, said client
device an option to request for removal of said second vehicle
part from said vehicle repair estimate report via said graphical
user interface, and if said at least one master server receives from
said client device said request to remove said second vehicle part,
then generating, using said at least one master server and said at
least one database, an updated vehicle repair estimate report
based on predictive estimating removing said second vehicle
part, and transmitting, using said at least one master sever, said
updated vehicle repair estimate report to said client device via
said graphical user interface.
REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Final Act. 4.
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Claims 1–5 and 12–15 stand rejected under pre–AIA 35 U.S.C.
§ 103(a) as unpatentable over the combination of Esser et al. (US 8,650,068
B2, issued Feb. 11, 2014) (“Esser”) and I-CAR Advantage Online (“One-
Time Use Fasteners,” dated Dec. 11, 2006) (“I-Car”). Final Act. 8.
Claims 6–10 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Esser, Watts (US 2011/025804 A1,
published Oct. 20, 2011), I-CAR, and Dutra et al. (US 2003/0154111 A1,
published Aug. 14, 2003) (“Dutra”). Final Act. 14.
Claim 11 stands rejected under pre–AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Esser and I-CAR. Final Act. 20.
Claims 16–20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over the combination of Esser, I-CAR, and Dutra. Final Act.
23.
ANALYSIS
Rejection of Claims 1–20 Under 35 U.S.C. § 101
Appellant argues that the Examiner’s rejection of claims 1–20 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter is in error.
Appeal Br. 17–31. To the extent Appellant has not advanced separate,
substantive arguments for particular claims, or other issues, such arguments
are waived. 37 C.F.R. § 41.37(c)(1)(iv). Appellant argues claims 1–20 as a
group. Appeal Br. 17, 31. 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.
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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
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). 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. 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. 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
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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; 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).
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.
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Step 1
Claim 1, as a method claim, falls within the process category 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 determined that claim 1 is directed to facilitating a
transaction between potential buyers and sellers of the vehicle parts and
repair services, which is a fundamental economic practice and a certain
method of organizing human activity related to sales and marketing, and
thus an abstract idea. Final Act. 6. We identify the following steps as part of
the recited abstract idea:
validating . . . said vehicle identification information;
generating . . . a listing of major vehicle parts associated
with said vehicle identification information;
determining . . . a second vehicle part for which damage
is likely and replacement is recommended when said selected
major vehicle part is damaged and replacement is desired;
generating . . . said vehicle repair estimate report based
on predictive estimating, wherein said vehicle repair estimate
report comprises a price of said second vehicle part, an
indication that said second vehicle part is a one-time use part,
and corresponding vehicle repair information; and
customizing, by said at least one master server and said at
least one database, said vehicle repair estimate report based on
at least one of a preference associated with a recipient of said
vehicle repair estimate report, an attribute associated with said
selected major vehicle part or an attribute associated with said
second vehicle part.
Consistent with Appellant’s description of the claims and the Examiner’s
determination, we conclude that the limitations we summarize above recite a
method for generating a vehicle repair estimate report, which is fairly
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characterized as a commercial interaction, and which falls into the “certain
methods of organizing human activity” category of abstract ideas. See Office
Guidance, 84 Fed. Reg. at 52.
We add that the above-noted recited functions can also be performed
mentally by merely thinking about these identifications and determinations,
or writing them down—both involving mere observation and logical
reasoning. See Office Guidance, 84 Fed. Reg. at 52 (listing exemplary
mental processes including observation and evaluation). Mental processes
remain unpatentable even when automated to reduce the burden on the user
of what once could have been done with pen and paper. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson.”).
We are not persuaded by Appellant’s conclusory argument “that a
human could not mentally perform the steps of the claims at issue in the
present application.” Appeal Br. 22. It is well settled that mere attorney
arguments and conclusory statements, which are unsupported by factual
evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA
1974) (attorney argument is not evidence). Therefore, the “validating,”
“generating,” and “determining” steps fall squarely within the mental
processes category of the agency’s guidelines, and claim 1 recites an abstract
idea for that additional reason.
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Because we agree with the Examiner that the claim recites an abstract
idea, we proceed to Prong Two of Step 2A to determine if the idea is
integrated into a practical application, in which case 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 claim 1 recites 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
Office Guidance at 55 n.24. In claim 1, the additional elements include the
“providing,” “requesting,” “receiving,” and “transmitting” steps, as well as
the recited “master server,” “graphical user interface,” “client device,” and
“database” limitations.
The Examiner determined that none of the additional limitations is
sufficient to amount to significantly more than the judicial exception
because “the technological structure is merely recited to perform the steps of
the invention.” Final Act. 6.
We agree with the Examiner. Claim 1 can readily be understood as
simply adding conventional computer components to well-known business
practices. See Alice, 134 S. Ct. at 2358–60. The Court in Alice made clear
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that a claim directed to an abstract idea does not move into section 101
“eligibility territory” by “merely requir[ing] generic computer
implementation.” Alice, 573 U.S. at 221; see also buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014). Therefore, the implementation of
the method on a computer does not, itself, make it eligible for a patent under
§ 101 and does not make it any less abstract.
Appellant argues that the Examiner erred because the claims are
directed to an improvement to an existing technological process. Appeal Br.
17. Appellant argues that similar to the specification in McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016),
Appellant’s Specification describes problems with prior graphical user
interfaces associated with vehicle repair estimates. Id. at 18 (citing Spec.
¶ 4). Appellant also argues that, similar to the claims in McRO, the claims
here “improve the previously manually performed process of generating
vehicle repair estimates by using a rule predictive estimating.” Id. at 19
(citing Spec. ¶ 51). Appellant argues that “the use of predictive estimating in
the present claims automates the previously manually performed process,
which was tedious, subject to errors and inconsistencies, and vulnerable to
subjectivity.” Id. at 20.
Appellant’s arguments are not persuasive. Appellant’s claims are not
similar to the claims found eligible in McRO, which recited a “specific . . .
improvement in computer animation” using “unconventional rules” that
related “subsequences of phonemes, timings, and morph weight sets” to
automatically animate lip synchronization and facial expressions for three-
dimensional characters that only human animators could previously produce.
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McRO, 837 F.3d at 1302–03, 1307–08, 1313–15. In McRO, “the
incorporation of the claimed rules” improved an existing technological
process. McRO, 837 F.3d at 1314.
In contrast, claim 1 does not improve an existing technological
process. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed.
Cir. 2016) (distinguishing between claims wherein the focus of the claims is
on an improvement in computer capabilities and those that invoke a
computer as a tool). Here, claim 1 merely adapts to a technological setting
(comprising a generic master server, database, client device, and graphical
user interface) the concept of generating and displaying a report. Appellant
does not claim to have invented a new user interface, database, master
server, or any other improvement in the computer technology underlying the
claims. See BSG Tech., LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287–88
(Fed. Cir. 2018) (“The claims do not recite any improvement to the way in
which such databases store or organize information . . . . an improvement to
the information stored by a database is not equivalent to an improvement in
the database’s functionality . . . the database serves in its ‘ordinary capacity’
of storing . . . information.”). Considering claim 1 as a whole, then,
Appellant’s invention lacks a technical solution to a technical problem like
the claims in McRO.
Appellant next argues that claim 1 is analogous to the claims in DDR
Holdings v. Hotels.com, 773 F.3d 1245, 1258–59 (Fed. Cir. 2014). Appeal
Br. 24. Appellant argues that “the claims override the routine and
conventional sequence of events (i.e., being provided a blank sheet)
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ordinarily triggered when an estimator drafts a vehicle repair estimate
report,” similar to the claims at issue in DDR. See id. at 26.
We note that, although the Federal Circuit in DDR Holdings held
claims “necessarily rooted in computer technology” to be patent eligible, the
court issued a relevant warning that “not all claims purporting to address
Internet-centric challenges are eligible for patent.” DDR Holdings, 773 F.3d
at 1258. Here, claim 1 is not directed to a solution that “is necessarily rooted
in computer technology in order to overcome a problem specifically arising
in the realm of computer networks,” as in DDR.
Considering claim 1 as a whole, then, Appellant’s invention lacks a
technical solution to a technical problem like the claims in McRO and DDR.
Claim 1 as a whole merely uses instructions to implement the abstract idea
on a computer or, alternatively, merely uses a computer as a tool to perform
the abstract idea.
Moreover, several of the additional elements involve insignificant
extra-solution activity, which the courts have found insufficient to integrate
the judicial exception into a practical application. See Office Guidance, 4
Fed. Reg. 55. The additional “receiving” and “transmitting” steps are
insignificant extra-solution activity. MPEP § 2106.05(g); see also, e.g.,
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive.”). The additional “providing”
and “requesting” steps amount to the mere transmission of information
(providing a graphical user interface, requesting vehicle identification
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information, requesting that the client device select a major vehicle part),
and thus are also insignificant extra-solution activity. See id.
Thus, the additional limitations 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 84 Fed. Reg. at 55. Rather, claim 1 recites an abstract
idea 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 claim is 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
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., 830 F.3d at 1353). 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
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features” must be more than “well-understood, routine, conventional
activity.” Mayo, 566 U.S. at 79.
We find no element or combination of elements recited in Appellant’s
claim 1 that contains any “inventive concept” or adds anything “significantly
more” to transform the abstract concept into a patent-eligible application.
Alice, 573 U.S. at 221. As discussed supra, we are not persuaded the
additional computer elements transform the abstract idea into a patent
eligible invention. As our reviewing court has observed, “after Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible.” DDR, 773 F.3d at 1256
(citing Alice, 573 U.S. at 223).
Moreover, we agree with the Examiner that Appellant’s arguments
concerning the applicability of the holding of Amdocs (Isreal) Ltd. V. Openet
Telecom, Inc., 841 F.3d1288, 1300–01 (Fed. Cir. 2016). (Appeal Br. 29–30)
are unpersuasive, as there is nothing recited in claim 1 that can be
considered directed to the operation of generic components in an
unconventional manner. Ans. 7.
Appellant argues that the approach of the present application is
unconventional because a comprehensive relevant parts list associated with
the major vehicle part being repaired is provided to the estimator. Appeal Br.
30. Appellant argues that this unconventional approach is not cited in any
cited prior art references and “achieves a technological solution to the
problem of prior art GUIs providing inadequate starting points for
generation of the vehicle repair estimate reports.” Id.
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We agree with the Examiner that, unlike the claimed invention in
Amdocs, which is directed to the manner and format in which the data itself
was stored, here, the claims cannot be considered a “technical solution” as
opposed to a non-technical solution applied to a computing environment. See
Ans. 7.
Furthermore, for the reasons discussed above, the “generating”
limitation forms part of the abstract idea. The relevant question is not
whether the abstract idea involves well-understood, routine, and
conventional activities, but rather whether the additional elements do. See,
e.g., Bridge & Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 892
(Fed. Cir. 2019) (“At Alice step two we assess ‘whether the claim limitations
other than the invention’s use of the ineligible concept to which it was
directed were well-understood, routine, and conventional.’” (quoting BSG
Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018)); BSG
Tech, 899 F.3d at 1290 (“[T]he relevant inquiry is not whether the claimed
invention as a whole is unconventional or non-routine. . . . It has been clear
since Alice that a claimed invention’s use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.” (first emphasis added)).
Because the “generating . . . a listing of major vehicle parts associated with
said vehicle identification information” limitation forms part of the abstract
idea, the Examiner was not required to show that this limitation is well
understood, routine, and conventional. Moreover, as explained above, the
“transmitting” step is insignificant extra-solution activity. Nothing in the
claim or Specification indicates that the listing of major vehicle parts is
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transmitted in a way that is not well-understood, routine, or conventional.
See, e.g., Spec. Fig 4 (406), ¶ 68.
Moreover, the novelty of any element or steps in a process, or even of
the process itself, is of no relevance in 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 further 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”).
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, such as receiving and
sending data, looking up data in a database, and storing data in a database.
See buySAFE, 765 F.3d at 1355; 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); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015) (sending messages over a network).
In addition, referring to the recited “master server,” the Specification
describes that
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[i]t is understood by those skilled in the art that master server
14 can take many different forms, including but not limited to a
web server, file server, database server, proxy server, FTP
server, and any other server configured with the appropriate
processing, memory and storage capacity to handle the load of
servicing a plurality of clients.
Spec. ¶ 31. Similarly, the Specification describes that the recited “client
device” can take many different forms, “including but not limited to a
desktop computer, laptop computer, tablet computer, cellular smart phone,
or any computer with a suitable operating system.” Id. at ¶ 28. With regard
to the recited “database,” the Specification describes generically that
“[d]atabase 15a stores a database of vehicle identification information.”
Spec. ¶¶ 46, 65. The written description also provides no details about the
graphical user interface that are not routine or conventional. See, e.g., Spec.
¶¶ 30 (describing generic display).
Because the Specification describes the additional elements in general
terms, without describing the particulars, we conclude the claim limitations
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 Memo2 § III.A.1; Spec. ¶¶ 28,
30, 31, 46, and 65.

2 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018) (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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Considering the claim elements both individually and as an ordered
combination, we conclude claim 1 does not have an inventive concept
because the claim, in essence, merely recites various computer-based
elements along with no more than mere instructions to implement the
identified abstract idea using the computer-based elements.
Appellant also argues that claim 1 is patent-eligible because its
practice does not preempt practice by others. Appeal Br. 30. While
preemption may signal patent ineligible subject matter, the absence of
complete preemption “does not demonstrate patent eligibility, where 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”).
Because the claims fail under both the Step 2A and Step 2B analyses,
we sustain the Examiner’s § 101 rejection of independent claim 1 and
grouped claims 2–20, not argued separately with particularity.
Rejections of Claims 1–20 Under 35 U.S.C. § 103(a)
We have reviewed the rejections of claims 1–20 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
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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’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.
Appellant contends the Examiner erred because the cited portions of
Esser do not teach or suggest “determining . . . a second vehicle part for
which damage is likely and replacement is recommended when said selected
major vehicle part is damaged and replacement is desired,” as recited in
claim 1. Appeal Br. 32. Appellant argues that “the primary user in Esser is a
car owner, not a car repair professional,” and thus “would not know what a
one-time use part is, much less care about which particular one-time use part
should be replaced.” Id. at 32–33. Appellant further argues that Esser
teaches away from the disputed limitation because Esser “merely bases the
suggested services off a simple criteria—make and model” and therefore
fails to teach or suggest the recited “determining” step. Id. at 33.
We are not persuaded that the Examiner erred. The actual claim
language requires “determining . . . stored relevant vehicle repair
information relating to said selected major vehicle part, said relevant vehicle
repair information includes a second vehicle part for which damage is likely
and replacement is recommended when said selected major vehicle part is
damaged and replacement is desired.” Appeal Br. 42–43. We agree with the
Examiner that claim 1 does not recite or depend on the nature of the user.
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Ans. 8. Moreover, the disputed “determining” step does not recite or require
a one-time use part. See id. at 9.
The Examiner found that Esser teaches informing the user of
additional repairs to related secondary parts that may need to be performed
at the time service on the first part is performed. Final Act. 9–10 (citing
Esser cols. 7:7–23, 9:51–10:10). Appellant has not persuasively rebutted the
Examiner’s findings or persuaded us that the cited sections of Esser do not at
least suggest the disputed limitation. The test for obviousness is not whether
the claimed invention is expressly taught or suggested 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’s “teaching away” argument is not persuasive because
Appellant has not identified where Esser actually criticizes, discredits, or
otherwise discourages “determining . . . a second vehicle part for which
damage is likely and replacement is recommended when said selected major
vehicle part is damaged and replacement is desired.” See In re Fulton, 391
F.3d 1195, 1201 (Fed. Cir. 2004); DePuy Spine, Inc. v. Medtronic Sofamor
Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (“A reference does not
teach away, however, if it merely expresses a general preference for an
alternative invention but does not ‘criticize, discredit, or otherwise
discourage’ investigation into the invention claimed”) (citing Fulton).
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For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Esser, Watts, and I-CAR teaches or suggests
the disputed “determining” limitation, as recited in claim 1.
Appellant next contends the Examiner erred because Esser does not
teach or suggest “generating . . . said vehicle repair estimate report based on
predictive estimating, wherein said vehicle repair estimate report comprises
a price of said second vehicle part, an indication that said second vehicle
part is a onetime use part, and corresponding vehicle repair information.”
Appeal Br. 36. Appellant argues that the cited portions of Esser merely teach
calculations used for determining labor cost of performing a service on a
vehicle, and a total estimate of the cost to perform the selected service,
including parts. Id. Appellant argues that the term “predictive estimating”
means “using a comprehensive listing prepared by the vehicle manufacturer
as a starting point for an estimator when he/she prepares a vehicle repair
estimate.” Id.
We are not persuaded that the Examiner erred. The Examiner found
that Esser teaches the disputed limitation by building a total estimate that
includes a price range for every part, and a range of labor and time values
using advanced statistical techniques and an econometric model. Final Act.
10 (citing Esser col. 7:50–9:50). The Examiner also found that I-CAR
teaches that a vehicle part is a one-time use part. Id. at 11 (citing I-CAR 2).
Appellant has not persuasively rebutted the Examiner’s findings.
Moreover, we agree with the Examiner that Appellant’s proffered
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interpretation3 of “predictive estimating” is not the broadest, reasonable
interpretation consistent with the Specification. Our reviewing court guides
that “[t]hough understanding the claim language may be aided by the
explanations contained in the written description, it is important not to
import into a claim limitations that are not a part of the claim.” SuperGuide
Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004). “We
have cautioned against reading limitations into a claim from the preferred
embodiment described in the specification, even if it is the only embodiment
described, absent clear disclaimer in the specification.” In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Because “applicants
may amend claims to narrow their scope, a broad construction during
prosecution creates no unfairness to the applicant or patentee.” In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007) (internal
citation omitted).
Applying this guidance here, we conclude that a broad but reasonable
interpretation of representative claim 1 supports the Examiner’s response in
the Answer that Appellant’s argument is not commensurate with any of the
recitations of the claim[] itself” and “inadequately calls upon any suggestion
of meaning from the disclosure in light of its alternative plain meaning.”
Ans. 9.

3 As an initial matter of claim construction, we give the claim its broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). “In the patentability context, claims
are to be given their broadest reasonable interpretations . . . limitations are
not to be read into the claims from the specification.” In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted).
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For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Esser, Watts, and ICAR teaches or suggests
the disputed generating” limitation of claim 1.
Appellant further contends the Examiner erred because there is no
motivation to combine the teachings of Esser and Watts with regard to the
“providing” limitation, as recited in claim 1. Appeal Br. 37. In particular,
Appellant argues that “Esser has no motivation to identify parts individually
because its audience is a non-technical car owner, who is unable to identify
car parts, much less appreciate a significance in their inclusion in the
repairs.” Id. at 38. Appellant also argues that, although Esser teaches a list of
services presented to a nontechnical car owner to choose from, Esser does
not teach or suggest a selection of parts, as claim 1 requires. Id.
We are not persuaded of Examiner error. We find 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); Final Act. 11. As discussed above, we are not persuaded by
Appellant’s argument that claim 1 requires a certain type of user.
Moreover, Appellant’s argument does not address the rejection
actually made by the Examiner. Nonobviousness 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, the Examiner relied on Watts in combination
with Esser and I-CAR as teaching or suggesting the “providing” limitation.
Final Act. 11.
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Appellant’s argument that Esser does not teach identifying parts
individually is not persuasive in light of Figure 2H, relied on by the
Examiner. Figure 2H of Esser identifies, for example, an alternator, a
starting and charging system, an alternator belt, and a battery. Esser Fig. 2H.
In light of the cited teachings of Esser and Watts, Appellant has failed
to persuade us that the Examiner erred in combining the teachings of Esser
and Watts.
Appellant next argues that the Examiner erred in combining Esser and
I-CAR. Appeal Br. 38. Appellant argues that “the ‘user’ in Esser is not the
‘user’ of interest in I-CAR” because “[t]he ‘user’ in Esser is a non-technical
vehicle owner, and the audience (the ‘user’) in I-CAR is a vehicle repair
technician.” Appeal Br. 39.
We are not persuaded of Examiner error. We find the Examiner
provided “articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness.” Kahn, 441 F.3d at 988; Final Act. 11.
As discussed above, we are not persuaded by Appellant’s argument that
claim 1 requires a certain type of user.
Thus, Appellant has not persuaded us that the Examiner erred in
combining the teachings of Esser and I-CAR.
Appellant also provides three Internet articles “touting the merits of
the new system” as evidence of secondary considerations of non-
obviousness. Appeal Br. 40. The Patent Owner asserts that the articles
demonstrate “a longfelt but unsolved need” and “overcoming the failure of
others.” Id. Exhibit A is a summary of the inventor’s speech given at a
California Autobody Association Glendale-Foothill Chapter meeting.
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Exhibit B is a summary of the inventor’s speech given at Centennial
College. Id., Ex. B. Exhibit C is an announcement and registration form for a
talk by the inventor at the California Autobody Association San Diego
Chapter. Id., Ex. C.
Because of the strength of the obviousness rejection and the subjective
nature of the evidence presented, we remain unpersuaded by Appellant’s
evidence of secondary considerations. Although evidence pertaining to
secondary considerations must be taken into account, such evidence does not
necessarily control the obviousness conclusion. See, e.g., Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1372 (Fed. Cir. 2007) (“the record establish[ed]
such a strong case of obviousness” that allegedly unexpectedly superior
results were ultimately insufficient to overcome obviousness conclusion).
Facts established by rebuttal evidence must be evaluated along with the facts
on which the conclusion of a prima facie case was reached, not against the
conclusion itself. See In re Eli Lilly & Co., 902 F.2d 943 (Fed. Cir. 1990).
Here, the evidence presented establishes that the inventor spoke about
a software product to several automobile-related groups. Appellant argues
that Exhibit A “mentions one-time use parts as a particular area of
improvement provided by the technology.” Appeal Br. 40. Appellant also
argues that the presence of the articles and their positive description of the
claimed technology indicates a long-felt but unsolved need. Id.
We are not persuaded by Appellant’s arguments. The relevance of
long-felt need and the failure of others to the issue of obviousness depends
on several factors. First, the need must have been a persistent one that was
recognized by those of ordinary skill in the art. In re Gershon, 372 F.2d 535,
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539 (CCPA 1967) (“Since the alleged problem in this case was first
recognized by appellants, and others apparently have not yet become aware
of its existence, it goes without saying that there could not possibly be any
evidence of either a long felt need in the . . . art for a solution to a problem
of dubious existence or failure of others skilled in the art who unsuccessfully
attempted to solve a problem of which they were not aware.”); Orthopedic
Equipment Co., Inc. v. All Orthopedic Appliances, Inc., 707 F.2d 1376 (Fed.
Cir. 1983) (noting that although the claimed invention achieved the desirable
result of reducing inventories, there was no evidence of any prior
unsuccessful attempts to do so). Appellant has not presented persuasive
evidence that a persistent need was felt and recognized by those of ordinary
skill in the art.
Second, the long-felt need must not have been satisfied by another
before the invention by applicant. Newell Companies v. Kenney Mfg. Co.,
864 F.2d 757, 768 (Fed. Cir. 1988) (noting that although at one time there
was a long-felt need for a “do-it-yourself” window shade material which was
adjustable without the use of tools, a prior art product fulfilled the need by
using a scored plastic material which could be torn); see also id. (“[O]nce
another supplied the key element, there was no long-felt need or, indeed, a
problem to be solved . . . .”). There is no evidence in the record before us as
to whether any long-felt need was satisfied by another before invention by
Appellant.
Third, the invention must in fact satisfy the long-felt need. In re
Cavanagh, 436 F.2d 491 (CCPA 1971). Here, there is no objective evidence
of a long-felt need or of the satisfaction of that need.
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Accordingly, we sustain the Examiner’s § 103(a) rejection of
independent claims 1, 6, 11, and 16, as well as the Examiner’s § 103(a)
rejection of dependent claims 2–5, 7–10, 12–15, and 17–20, argued as a
group with claim 1. Id. at 41.
DECISION
We affirm the decision of the Examiner rejecting claims 1–20.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–5, 12–15 103(a) Esser, Watts, I-CAR 1–5, 12–15
6–10 103(a) Esser, Watts, I-CAR,
Dutra
6–10
11 103(a) Esser, I-CAR 11
16–20 103(a) Esser, I-CAR, Dutra 16–20
Overall
Outcome:

1–20

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