Steven B. Homes, Inc.

Patent Trials and Appeals Board

Sep 23, 2020

2019006656 (P.T.A.B. Sep. 23, 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 09/23/2020
DUNLAP CODDING, P.C.
PO BOX 16370
OKLAHOMA CITY, OK 73113
EXAMINER
YOUNG, MICHAEL C
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
09/23/2020 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 REQUEST FOR REHEARING
Appellant1 requests a rehearing of the Decision on Appeal mailed June
26, 2020 (the “Decision”). See Request for Rehearing filed August 25, 2020
(the “Request”). We have reconsidered the Decision in light of Appellant’s
arguments; however, we are not persuaded of any error therein.

1 Herein, “Appellant” refers 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.
Appeal 2019-006656
Application 15/258,534

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DISCUSSION
In the Decision, we affirmed the Examiner’s rejection of the claims
pursuant to the U.S. Patent Office’s revised guidance on the application of
35 U.S.C. § 101. See Decision 11; see also Alice Corp. Pty. Ltd. v. CLS
Bank Int’l, 573 U.S. 208, 217 (2014) (Describing the two-step framework
under 35 U.S.C. § 101, “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.”); USPTO’s 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).
Independent claim 1 recites a “user device having . . . a device
locator,” and “caus[ing] the user device to determine a current location of
the at least one user device using the device locator.” In the Request,
Appellant “submits that the Board misapprehended the device locator
limitation in the claims, and therefore, should reconsider the affirmation of
the rejection.” Request 3.

Footnote 3
The focus of the Request is regarding “footnote 3 on page 9 of the
Decision, [in which] the Board, as understood, equates the claimed ‘device
locator’ in claim 1 with ‘manually entering an address into a device
locator.’” Request 3. Appellant contends “the Board has misapprehended
the meaning of the claimed device locator within the context of the claim
language. The meaning of the claims, when read properly in light of the
Specification, does not encompass a user manually entering an address into a
device locator.” Id. at 6.
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Application 15/258,534

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The Request does not show we misapprehended or overlooked any
points in rendering the Decision. See MPEP § 1214.03. The Decision
included a footnote discussing a separate claim construction:
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”).
Decision 9, n. 3.
This footnote did not supply a basis for the eligibility analysis.
Rather, footnote 3 merely pointed out the breadth of the claims as a note
separate from the decision. See id. (“Separately, we note . . . ”). Our
determination of ineligibility—in contrast with the footnote—was based on
determining the device locator limitations were part of the recited abstract
idea, or at most were used to automate steps normally performed by realtors
or house sellers. See Decision 6, 9. The determination of ineligibility did
not turn on whether the claim encompasses manual address entry.
Footnote 3 was supplemental to the Decision’s ultimate holding of
patent eligibility. For clarity of the record we withdraw the alternative claim
construction relating to manual data entry: we amend the decision by
deleting footnote 3 on page 9. This amendment does not alter our decision
upholding the Examiner’s eligibility rejection, as discussed further herein.
See 37 CFR 41.52 (“The decision on the request for rehearing is deemed to
incorporate the earlier opinion reflecting its decision for appeal, except for
those portions specifically withdrawn on rehearing.”).

Appeal 2019-006656
Application 15/258,534

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Eligibility
Regarding the analysis of the Decision with respect to the Guidance,
Appellant does not show we misapprehend or overlooked any points in
finding the claims are patent ineligible.
First, Appellant does not challenge our adoption of the Examiner’s
determination, under Prong One of the Guidance, that the device locator
limitations recite an abstract concept. See Decision 6 (“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.’”); Ans. 5, 6 (identifying the recited “cause the user device to
determine a current location of a device of the at least one user device using
the device locator,” as reciting certain methods of organizing human
activity). The record before us does not show we misapprehend or
overlooked any points in agreeing with the Examiner. See Decision 5–7;
Guidance, 84 Fed. Reg. at 54 (“In Prong One, examiners should evaluate
whether the claim recites a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon.”). Further, the Examiner’s analysis
comports with similar analysis by our reviewing court. Cf. Elec. Commc’n
Techs., LLC v. ShoppersChoice.com, LLC, 958 F.3d 1178, 1181 (Fed. Cir.
2020) (“Two of the six identified functions—monitoring the location of a
mobile thing and notifying a party in advance of arrival of that mobile
thing—amount to nothing more than the fundamental business practice of
providing advance notification of the pickup or delivery of a mobile thing.”);
British Telecommunications PLC v. IAC/InterActiveCorp, 813 F. App’x 584,
587 (Fed. Cir. 2020) (“We have previously held that tailoring the provision
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of information to a user’s characteristics, such as location, is an abstract
idea.”).
Second, we are not persuaded we overlooked or misapprehended any
points in determining that, even when analyzed under Prong Two, the device
locator limitations of claim 1 do not “impose a meaningful limit on the
judicial exception.” Decision 9. The Request’s central argument—that the
device locator limitations “do[] not include a user manually entering an
address into a device locator” (Request 6, emphasis added)—is unresponsive
to the Decision’s determination that the disputed limitations “merely
automate[] steps . . . . [and] do not improve the underlying computer”
(Decision 9, emphasis added). Particularly, although the request
acknowledges our determination (see Request 3), the request presents no
arguments or reasoning to show it is in error. Nor does the Request
challenge our determination that the device locator, defined in the
Specification as encompassing “future developed” technologies, served to
preempt the field. Decision 10, n. 5 (citing Spec. ¶¶ 32, 36, 37).
Accordingly, we do not see any points that were misapprehended or
overlooked when we “agree[d] with the Examiner that claim 1 does not
integrate the judicial exception into a practical application.” Decision 10;
Guidance, 84 Fed. Reg. at 54.

CONCLUSION
We modify the Decision to withdraw footnote 3 on page 9. We do not
grant the request for rehearing, however, as we are not persuaded of error in
the Decision. See 37 CFR 41.52.

Appeal 2019-006656
Application 15/258,534

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DECISION SUMMARY
Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
1–4, 7–10,
13
101 Eligibility 1–4, 7–10,
13

Final Outcome of Appeal after Rehearing:
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,
Marshall, Raveis,
Rankin
3, 4, 9, 10
Overall
Outcome
1–4, 7–10,
13

REHEARING DENIED