Steven B. Homes, Inc.

Patent Trials and Appeals Board

Jun 26, 2020

2019006656 (P.T.A.B. Jun. 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.
15/258,534 09/07/2016 Steven Hamilton Burris 3937.004 1021
30589 7590 06/26/2020
DUNLAP CODDING, P.C.
PO BOX 16370
OKLAHOMA CITY, OK 73113
EXAMINER
YOUNG, MICHAEL C
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
06/26/2020 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):
docketing@dunlapcodding.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN HAMILTON BURRIS
Appeal 2019-006656
Application 15/258,534
Technology Center 3600
Before ADAM J. PYONIN, DAVID J. CUTITTA II, and
PHILLIP A. BENNETT, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s rejection. 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(a). Appellant identifies the real party in interest as Steven B.
Homes, Inc. Appeal Br. 1.
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STATEMENT OF THE CASE
Introduction
The Application is directed to “making FSBO [(For Sale By Owner)]
property listing information more readily available while allowing the seller
to leverage the knowledge, skills, and network of a real estate agent to aid in
the selling of a property for an agreed upon fee.” Spec. ¶ 4. Claims 1–4, 7–
10, and 13 are pending; claims 1, 7, and 13 are independent. Appeal Br. 19.
Claim 1 is reproduced below for reference:
1. A method, comprising:
establishing communication between at least one host
system having a first processor and a database and a first set of
instructions stored in non-transitory computer readable memory,
and at least one user device having a second processor, an input
device, an output device, a communication device, a second set
of instructions stored in non-transitory computer readable
memory, and a device locator;
the second set of instructions when executed cause the user
device to determine a current location of the at least one user
device using the device locator_and send the current location to
the at least one host system;
upon receiving the current location, the first set of
instructions causes the host system to convert the current location
to a physical address and access property information from at
least one assessor database with the physical address, the
property information indicative of at least one property
associated with the current location of the at least one user device
and send the property information to the at least one user device;
upon receiving the property information, the second set of
instructions causes the at least one user device to provide at least
one selectable indicator on the output device of the at least one
user device associated with the at least one property;
responsive to a first user selecting the indicator associated
with the at least one property, the second set of instructions
causes the user device to send the first user’s selection to the host
system; and,
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responsive to receiving the first user’s selection, the host
system creates a new property listing containing the accessed
property information and a listing agent information, the listing
agent information being user information associated with the
first user, the host system storing the new property listing in the
database, wherein the new property listing is a for sale by owner
(FSBO) property listing;
receiving, at the at least one host system, a request from a
second user to view the new property listing;
responsive to receiving the second user's request, the host
system searches the database for the new property listing; and
wherein the host system only makes the new property
listing available to the second user if the at least one host system
determines that the second user is part of a defined group of users
associated with the first user.

References and Rejections
The Examiner relies on the following prior art:
Name Reference Date
Raveis
Rankin
US 2001/0047282 A1
US 2011/0288962 A1
Nov. 29, 2001
Nov. 24, 2011
Redstone
Thomas
Marshall
US 2012/0047147 A1
US 2012/0246024 A1
US 2013/0332372 A1
Feb. 23, 2012
Sep. 27, 2012
Dec. 12, 2013

Claims 1–4, 7–10 and 13 are rejected under 35 U.S.C. § 101 as being
patent ineligible. Final Act. 2.
Claims 1–2, 7–8 and 13 are rejected under 35 U.S.C. § 103 as being
unpatentable over Thomas, Redstone, Desiderio, Marshall, and Raveis.
Final Act. 11, 12.
Claims 3, 4, 9, and 10 are rejected under 35 U.S.C. § 103 as being
unpatentable over Thomas, Redstone, Desiderio, Marshall, Raveis, and
Rankin. Final Act. 36.
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ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. Arguments Appellant could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). We discuss the
patent eligibility and obviousness rejections, below, in turn and in light of
Appellant’s arguments.

Patent Eligibility
The Examiner determines the claims are patent ineligible under 35
U.S.C. § 101, because the claims “[are] directed to a judicial exception (i.e.,
a law of nature, a natural phenomenon, or an abstract idea) without
significantly more.” Final Act. 2 (emphasis omitted); see Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 217–218 (2014) (describing the two-step
framework “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.”).
After the mailing of the Final Action—but prior to the mailing of the
Answer or the filing of Appellant’s Briefs—the U.S. Patent and Trademark
Office (USPTO) published revised guidance on the application of § 101
(“Guidance”). See 2019 Revised Patent Subject Matter Eligibility Guidance
Notice, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Notice”); see also USPTO, October
2019 Update: Subject Matter Eligibility (“October Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df). “All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” Notice, 84 Fed. Reg. 51; see also October
Update at 1.
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Under the 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).2
Notice, 84 Fed. Reg. 52–55. Only if a claim (1) recites a judicial exception
and (2) does not integrate that exception into a practical application, does the
Office then look, under Step 2B, 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.
Notice, 84 Fed. Reg. 52–56.
We agree with, and adopt as our own, the Examiner’s eligibility
analysis. We add the following primarily for emphasis and clarification with
respect to the Guidance.

A. Step 2A, Prong One
The Examiner determines the claims include an excepted abstract
concept, because the claims “recite a process to advertise and market parcels

2 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Notice - Section III(A)(2), 84 Fed. Reg. 54–55.
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of land for sale using a generically claimed interface.” Ans. 6. The
Examiner has properly analyzed the claim limitations under Prong One of
the Guidance: the Examiner has identified the specific limitations in the
claim that fall within the subject matter groupings of abstract ideas
enumerated in the Guidance, and has provided a reasoned explanation
sufficient to support the determination. See Ans. 5–7; Notice, 84 Fed. Reg.
54. We find no error in the Examiner’s determination, as the Examiner has
reasonably identified limitations of claim 1 (see Ans. 5, 6) that are
“commercial or legal interactions (including agreements in the form of
contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations)” (Notice, 84 Fed. Reg. 52). See, e.g., Spec.
¶ 1 (“Real estate marketing and sales is largely facilitated by real estate
agents.”); ¶ 51 (“listing FSBO real estate for sale”).
Accordingly, we agree with the Examiner that the claims recite a
judicial exception under Prong One of the Guidance. See Final Act. 40;
Notice, 84 Fed. Reg. 54; cf. Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d
1084, 1093 (Fed. Cir. 2019) (“As a general rule, ‘the collection,
organization, and display of two sets of information on a generic display
device is abstract.’”) (quoting Interval Licensing LLC v. AOL, Inc., 896 F.3d
1335, 1345 (Fed. Cir. 2018)); Intellectual Ventures I LLC v. Erie Indem. Co.,
850 F.3d 1315, 1328 (Fed. Cir. 2017) (“Because we agree with the district
court that the heart of the claimed invention lies in creating and using an
index to search for and retrieve data, we conclude that the claims here are
directed to an abstract concept.”); Move, Inc. v. Real Estate All. Ltd., 721 F.
App’x 950, 954 (Fed. Cir. 2018) (determining claims recite “the abstract
idea of a method for collecting and organizing information about available
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real estate properties and displaying this information on a digital map that
can be manipulated by the user”) (internal quotations omitted).
As we agree with the Examiner that independent claim 1 recites a
judicial exception under Prong One of the Guidance, we continue our
analysis under Prong Two. See Notice, 84 Fed. Reg. 54; October Update at
10.

B. Step 2A, Prong Two
Appellant contends independent claim 1 is eligible for being “directed
to a process that is a technical solution to a technical problem.” Appeal
Br. 21. According to Appellant, the claim “is specifically directed to the
efficient creation and distribution of a new FSBO property listing,” whereas
“[a]t the time of the invention, to create a new property listing prior art
systems required the user to manually input property information. Id.; see
also Reply Br. 4. Appellant contends claim 1, therefore, “as a whole is a
practical application implemented with physical elements that work together
to create the new property listing,” and “provides a specific improvement
over prior systems, resulting in an improved creation and distribution of new
property listings.” Appeal Br. 26, 27; see also Reply Br. 6.
We are not persuaded the Examiner errs in determining the additional
elements of claim 1 “fail[] to integrate the judicial exception into a practical
application because the instant application merely recites words ‘apply it’
(or an equivalent) with the judicial exception or merely includes instructions
to implement an abstract idea.” Ans. 7. The alleged “additional elements”
that Appellant relies on for arguments under Step 2A, Prong Two are part of
the abstract idea as identified by the Examiner. Appeal Br. 25, 26; see
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Ans. 7–8 (“[T]he additional elements or combination of elements other than
the abstract idea itself include the elements such as a ‘computer’ recited at a
high level of generality.”), 9 (“Here, the instructions entirely comprise the
abstract idea.”). Appellant cannot rely solely on improvements recited by
the abstract idea as providing the basis to conclude the abstract idea is
integrated into a practical application. See Notice, 84 Fed. Reg. 55 n. 24;
Trading Techs. Int’l., Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019)
(“The abstract idea itself cannot supply the inventive concept, no matter how
groundbreaking the advance.”) (internal quotation omitted).
Appellant has not identified additional elements, individually or in
combination, that integrate the exception into a practical application. See
Notice, 84 Fed. Reg. 54, 55. Rather, claim 1 includes additional elements of
a “host system” and a “user device,” and we agree with the Examiner the
claimed use of these elements “amounts to appending generic computer
elements to [an] abstract idea.” Ans. 8; Spec. ¶ 36 (“Embodiments of the
system 10 may also be modified to use any user device 14 or future
developed devices.”), ¶ 43 (“Each element of the host system 12 may be
partially or completely network-based or cloud-based, and may or may not
be located in a single physical location.”); Notice, 84 Fed. Reg. 55. For this
reason, we agree with the Examiner that claim 1 is directed to an abstract
concept pursuant to Step 2A, Prong Two of the Guidance. See Ans. 9.
Even if we consider the disputed limitations as additional elements,
we disagree with Appellant’s contentions that such limitations remove the
claims from the realm of ineligible subject matter. Claim 1, as described by
Appellant—that it “enables the use of a device locator to determine an
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address of a property[3] which is then used to extract accurate property
information from an unconventional source[4] to quickly and easily create a
new property listing” (Reply Br. 3)—recites a process that merely automates
steps normally performed by FSBO sellers or realtors. See Spec. ¶¶ 1–4;
Appeal Br. 21 (“At the time of the invention, to create a new property listing
prior art systems required the user to manually input property information.”);
Reply Br. 6 (Claim 1 “greatly enhances the technological area so that
manual entry of property information is no longer needed.”). The claim
limitations do not improve the underlying computer or other technology, or
otherwise impose a meaningful limit on the judicial exception. See October
Update at 11; Ans. 8, 9; cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015) (“the ability to automate or otherwise make
more efficient traditional price-optimization methods . . . . is insufficient to
render [the] claim patent eligible”); LendingTree, LLC v. Zillow, Inc., 656 F.
App’x 991, 996 (Fed. Cir. 2016) (“It is well settled, though, that automating
conventional activities using generic technology does not amount to an
inventive concept.”); In re Villena, 745 F. App’x at 376 (“the basic steps of
receiving user input, producing property valuations, and providing display
information . . . . is a classic case of implementing an abstract idea on a
computer”).

3 Separately, we note the claim, in light of the Specification, encompasses a
user manually entering an address into a device locator. See Spec. ¶ 37
(“implementations of the device locator 23 may include, but are not limited
to . . . any future developed system or method); ¶ 53 (“property intake
questions of the system 10 may be administered manually”).
4 We note the claim recites accessing property information from an assessor
database, which is a conventional source of property information that may
be provided by a government agency. See Spec. ¶ 46; Desiderio ¶ 14.
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Furthermore, the specificity of claim 1 is insufficient to establish
patent eligibility. Cf. Alice, 573 U.S. at 222 (alterations in original) (quoting
Parker v. Flook, 437 U.S. 584, 593 (1978)) (“In holding that the process was
patent ineligible, we rejected the argument that ‘implement[ing] a principle
in some specific fashion’ will ‘automatically fal[l] within the patentable
subject matter of § 101.’”). Similarly, any questions on preemption in the
instant case have been resolved by the analysis herein and by the Examiner.5
See Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (“[W]here a patent’s claims are deemed only to
disclose patent ineligible subject matter under the Alice framework, as they
are in this case, preemption concerns are fully addressed and made moot.”).
Accordingly, agree with the Examiner that claim 1 does not integrate
the judicial exception into a practical application. See Ans. 7; Notice, 84
Fed. Reg. 54. As the claim recites a judicial exception and fails to integrate
the exception into a practical application, the claim is “directed to the . . .
judicial exception.” Id. at 54.

C. Step 2B
Appellant argues claim 1 “entail[s] an unconventional technological
solution,” as “the claim’s determining, converting, and accessing limitations
necessarily require [the recited] ‘generic’ components operate in an

5 In any event, we disagree with Appellant that “claim 1 of the present
application is narrowly drawn to not preempt.” Appeal Br. 35. Claim 1,
consistent with the Specification, is drawn to encompass “future developed”
(and currently unknown) techniques, and thus is preemptive. Spec. ¶¶ 36,
37; see also Spec. ¶ 32.
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unconventional manner to achieve an improvement in computer
functionality.” Appeal Br. 33, 34.
We are not persuaded the Examiner errs. As discussed above with
respect to Prong Two, we determine that claim 1 does not recite a
technological improvement. See Final Act. 39. Further, the Examiner
reasonably determines that the additional elements recited by independent
claim 1—individually and in combination—are well understood, routine,
and conventional. See Final Act. 9, 10 (citing Spec. ¶¶ 34, 39, 52); Ans. 8–
10 (citing Spec. ¶¶ 28, 30, 34); Alice, 573 U.S. at 226 (“Nearly every
computer will include a ‘communications controller’ and ‘data storage unit’
capable of performing the basic calculation, storage, and transmission
functions required by the method claims.”); see also Spec. ¶¶ 25, 25–52. In
response, Appellant has not persuasively identified additional elements that
amount to significantly more than the judicial exception. See, e.g., Appeal
Br. 32–36. Thus, we determine the claim limitations, individually and as an
ordered combination, do not provide an inventive concept pursuant to Step
2B of the Guidance. See Notice, 84 Fed. Reg. 55–56.
We are not persuaded the Examiner errs in determining independent
claim 1 is patent ineligible. Appellant does not present additional arguments
for the remaining claims. See Appeal Br. 19. Accordingly, we sustain the
Examiner’s eligibility rejection of claims 1–4, 7–10, and 13.

Obviousness
Appellant argues the Examiner’s rejection is in error, because “the
Examiner has proposed a combination that a person of skill in the art would
not consider.” Appeal Br. 48. Appellant contends a person of ordinary skill
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would not “look to [Thomas’s] system designed specifically to search and
access existing [real estate] listings and combine it with [Redstone’s] system
specifically designed for creating social media ‘places.’” Appeal Br. 48, 49.
Appellant further contends the Examiner’s combination rationale, to
“‘dynamically adjust the visibility of places maintained in a geosocial
networking system,’ . . . . does not apply to a method of creating new
property listings as recited in claim 1 of the present application.” Id. at 49
(quoting Final Act. 16).
We are persuaded the Examiner’s obviousness rejection is in error. A
“patent composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art,” as “it can be important to identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007). The Examiner finds one of ordinary
skill would combine the teachings of Thomas, Redstone, Desiderio,
Marshall, and Raveis, for “managing real estate information” (Final
Act. 22); however, the Examiner’s stated rationale is to improve “a geosocial
networking system” (Final Act. 16). We agree with Appellant that the
Examiner’s combination does not have sufficient rational underpinning, as
the Examiner has not established that managing real estate information
would improve a social networking system. Reply Br. 9, 10; see Ans. 14
(describing the combination as “related to real property” without discussing
Redstone’s social networking system). Thus, the Examiner has not
identified a reason that would have prompted a person of ordinary skill in
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the relevant field to combine the elements in the way the claimed new
invention does.
Without sufficient reasoning, the Examiner’s combination of five
disparate references appears to be the result of a hindsight analysis. See
Ans. 11–14. An obviousness determination cannot rest upon impermissible
hindsight reasoning, and to guard against hindsight reasoning the “factfinder
should be aware . . . of the distortion caused by hindsight bias and must be
cautious of arguments reliant upon ex post reasoning.” KSR, 550 U.S. at
421. Here, the Examiner’s analysis appears reliant on ex post reasoning, and
lacks a rational underpinning to make the combination. Thus, the proffered
analysis is insufficient to support the obviousness determination.
We are persuaded the Examiner errs in rejecting independent claim 1
as obvious in view of the cited references. Independent claims 7 and 13
recite similar limitations and are rejected for similar reasons. See Final Act.
23–34. Accordingly, we do not sustain the Examiner’s obviousness
rejection of independent claims 1, 7, and 13, or the claims dependent
thereon.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
1–4, 7–10,
13
101 Eligibility 1–4, 7–10,
13

1–2, 7–8, 13 103 Thomas, Redstone,
Desiderio,
Marshall, Raveis
1–2, 7–8,
13
3, 4, 9, 10 103 Thomas, Redstone,
Desiderio,
3, 4, 9, 10
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Claims
Rejected
35 U.S.C. § Basis/Reference(s) Affirmed Reversed
Marshall, Raveis,
Rankin
Overall
Outcome
1–4, 7–10,
13

The Examiner’s decision is affirmed because we have affirmed at
least one ground of rejection with respect to each claim. See 37 C.F.R.
§ 41.50(a)(1).

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