Ex parte Wilson

• Decision Date: 26 October 2017
• Docket Number: 127,Appeal 2016-004335,Application 13/027
• Parties: Ex parte JAMES WILSON, JEFFREY MCNEILL, MICHAEL DAVIS, MARK SILVA, and GENEVIEVE C. COMBES[1] Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte JAMES WILSON, JEFFREY MCNEILL, MICHAEL DAVIS, MARK SILVA, and GENEVIEVE C. COMBES^[1] Technology Center 3600

Appeal 2016-004335

Application 13/027, 127

United States Patent and Trademark Office, Patent Trial and Appeal Board

October 26, 2017

FILING DATE: 02/14/2011

Before JASON V. MORGAN, JOSEPH P. LENTIVECH, and MICHAEL M. BARRY Administrative Patent Judges.

DECISION ON APPEAL

BARRY Administrative Patent Judge.

Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of claims 10, 11, 13, 14, 21, 23, 24, 26, and 27, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).

We affirm.

Introduction

Appellants describe the invention as relating "to methods and systems for transmitting automated alerts related to property locations during an agent's visit to such locations." Spec. ¶ 3. Appellants describe features of an embodiment of the invention as follows.

[T]he agent is relieved of the hassle of having to identify specific clients who may be interested in a property that the agent is currently viewing. The agent simply has to activate the location alert feature, and the real estate service automatically captures information about the current location, identifies potential clients that may be interested in the current location, and blasts out personalized alerts with information that the clients would not otherwise be able to access.

Id. ¶ 11.

Claim 10 is illustrative of the pending claims:

10. A method of communicating information about a real estate property by a real estate agent to potential purchasers, the method comprising:

detecting a current location of the real estate agent using geo-location capabilities within a mobile device carried by the real estate agent;

prompting the real estate agent to record, via the mobile device, multimedia information associated with the real estate agent's visit to a specific MLS-listed property corresponding to the detected geographic location of the real estate agent;

receiving, by a computer system of a real estate service, the multimedia information associated with the specific MLS-listed property recorded via the mobile device;

retrieving, from a database in communication with the computer system of the real estate service, a list of clients of the real estate agent;

identifying, from the list of clients of the real estate agent, a prospective real estate buyer with potential interest in purchasing the specific MLS-listed property based on preference information identified from a prior search history of the prospective real estate buyer; and

causing, by the computer system of the real estate service an alert to be transmitted to the prospective real estate buyer based on the prospective real estate buyer being identified as having potential interest in purchasing the specific MLS-listed property, the alert including the multimedia information associated with the real estate agent's visit to the specific MLS-listed property.

App. Br. 42 (Claims App'x).

Rejections and Prior Art References

Claims 10, 11, 13, 14, 21, 23, 24, 26, and 27 stand rejected under 35 U.S.C. § 101 as directed to ineligible subject matter. Final Act. 2-3; see also Ans. 2-6 (issuing new grounds of rejection under 35 U.S.C. § 101 for these claims).

Claims 10, 11, 13, 14, 21, 23, 24, 26, and 27 stand rejected under 35 U.S.C. § 103(a) as unpatentable over by Wilson (US 2011/0275441 A1; Nov. 10, 2011), Craig et al. (US 2010/0217686 A1; Aug. 12, 2010), Otto et al. (US 2007/0255581 A1; Nov. 1, 2007), and Skillen et al. (US 7, 469, 245 B2; Dec. 23, 2008). Final Act. 4-15.

ANALYSIS

We have reviewed the Examiner's rejections in light of Appellants' contentions of reversible error. We disagree with Appellants' conclusions. Instead, we adopt the Examiner's findings and reasons: (a) for the 35 U.S.C § 101 rejection, as set forth in the Answer; and (b) for the 35 U.S.C. § 103(a) rejection, as set forth in the Final Rejection and as set forth in the Answer. We highlight the following for emphasis.

The 35 U.S.C. §101 Rejection

"Issues of patent-eligible subject matter are questions of law and are reviewed without deference." CyberSource Corp v. Retail Decisions, Inc., 654 F.3d 1366, 1369 (Fed. Cir. 2011). To determine if a claim recites patentable subject matter under 35 U.S.C. § 101, the Supreme Court has set forth a two-part test. Alice Corp. v. CLS Bank Int'l, 134 S.Ct. 2347, 2355 (2014).

1. Step One of the Alice Analysis

"First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts" of "laws of nature, natural phenomena, and abstract ideas." Alice, 134 S.Ct. at 2355. A court must be cognizant that "all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas" (Mayo Collaborative Servs. v. Prometheus Lab., Inc., 566 U.S. 66, 71 (2012)), and "describing the claims at... a high level of abstraction and untethered from the language of the claims all but ensures that the exceptions to § 101 swallow the rule." Enflsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016). Instead, "the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter." Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).

The Examiner finds the claims "are directed to two abstract ideas" as follows:

The "prompting the real estate agent tor record, via the mobile device, multimedia information associated with the real estate agent's visit to a specific MLS-listed property . . ." step broadly describes a method for organizing human activities. The courts previously found certain concepts relating to managing human behavior abstract. . . . The "identifying ... a prospective real estate buyer with a potential interest in purchasing the specific MLS-listed property based on preference information . . ." and "causing ... an alert to be transmitted to the prospective real estate buyer ... the alert including multimedia information ..." steps could also be understood as describing a method for comparing new and stored information and using rules to identify options. These methods are also abstract ideas. . . .

Ans. 3 (internal ellipses in original, ending ellipsis added). The Examiner similarly identifies abstract ideas to which dependent claims 11, 13, 23, 24, 26, and 27 are drawn. Id. at 5-6.

a) Prima Facie Case

Appellants argue the Examiner fails to establish a prima facie case for unpatentability under § 101 because the identification of the allegedly abstract idea of the independent claims is conclusory and unsupported. Reply Br. 3-5, 17-18. We disagree. As the Federal Circuit has clarified,

"the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production." Hyatt v. Dudas, 492 F.3d 1365 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). See also In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). The Patent and Trademark Office ("PTO") satisfies its initial burden of production by "adequately explain[ing] the shortcomings it perceives so that the applicant is properly notified and able to respond." Hyatt, 492 F.3d at 1370. In other words, the PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in "notify[ing] the applicant . . . [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application." 35 U.S.C. § 132. That section "is violated when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection." Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).

In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (brackets in original).

Appellants contend the Examiner's identification of two abstract ideas to which the claims are directed lacks "evidentiary support or analysis" and "thus fails to establish a prima facie case that the claims are directed to an abstract idea." Reply Br. 3. We disagree. The Examiner's findings and reasons in the new ground of rejection along with the discussion in the Response to Argument section in the Answer (see Ans. 2-9 (inter alia, comparing Appellants' claims to guidance provided from prior judicial precedent and published guidance from the USPTO on Subject Matter Eligibility)), however, are not "so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection." In re Jung, 637 F.3d at 1362.

Appellants also contend the Examiner fails to establish a prima facie case by not providing required "authoritative documentation to support the Examiner's § 101 rejection." Reply Br. 4 (referencing the Administrative Procedure Act (APA), 5 U.S.C. § 500 et seq.. In re Gartside, 203 F.3d 1305, 1315 (Fed. Cir. 2000), In re Dembiczak, 175 F.3d 994, 999-1000, 50 U.S.P.Q.2d 1614, 1617 (Fed. Cir. 1999), and Donahue v Barnhart, 279 F.3d 441, 446 (7th Cir. 2002)). We again disagree. The fact-finding is subject to review for "substantial evidence, " not support by "authoritative documentation." See, e.g., In re Gartside, 203 F.3d at 1308. Further, we note Examiners may rely on their own technical expertise, e.g., to describe the knowledge and skills of a person of ordinary skill in the art. In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003) (Examiners are "persons of scientific competence in the fields in which they work, " and their findings are "informed by their scientific knowledge"); see also MPEP § 2141 (II)(C) (Resolving...