Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s Reply
Applicant's response of 06/20/25 has been entered. The examiner will address applicant's remarks at the end of this office action.
Priority
The filing date for the claimed invention of claims 1-26 is still considered to be no earlier than 06/14/22. The parent application that is ultimately relied upon in the instance CIP filing, 15267544, does not support the property value boost limitation and how it is arrived at. Also, the subject matter of claim 20 is not found in 15267544. Therefore, the pending claims do not get the benefit of the earlier date of 16276544, due to CIP subject matter being claimed.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claims recite a system and a method; therefore, the claims pass step 1 of the eligibility analysis.
For step 2A, the claim(s) recite(s) an abstract idea of determining a fitness index for a property and a property value boost (an indication of the incremental home value achieved by a homeowner for better maintaining their property). This represents a certain method of organizing human activities type of abstract idea.
Using claim 1 as a representative example that is applicable to claims 12, the abstract idea is defined by the elements of:
creating or updating at least one fitness metric for the at least one property;
determining a property fitness index of the at least one property using the at least one fitness metric;
determining a property value for the property; and
determining a property value boost for the property using the product of the property value for the property and an incremental factor for the property,
wherein the incremental factor is based on at least one behavior of the user within the at least one property and at least one of: a level of engagement of the user with the system; at least one state of the property; and at least one trait of the property
For claim 20, the abstract idea is defined by:
determining user input, wherein the user input indicates an action relating to a property; and
auto-populating a property log for the property with the action and an associated date for the action
The above limitations of claim 1 are reciting a system and method that is determining a property value for a subject property, and determining a property value boost based on activities of a user such as a user making upgrades or improvements to their home (behavior of the user in the property) and based on property information. Claim 20 recites the act of receiving updated property information and populating a property log, and is a part of the valuation process for the property. Determining a value for a property that is based on stored information about the property (the fitness index) and that considers how much a property might go up if upgrades or renovations are made (the claimed behavior of the user is set forth as being activities that the user performs on the property such as maintenance and property upgrades, see paragraph 113 of the specification) is considered to be reciting a fundamental economic practice of assessing a perceived value of a property such as a home in view of property information and information about property improvements or upgrades that have been made. People have manually performed upgrades on properties with the expectation that they would provide a return on investment by allowing the property to sell at a higher price. This is done by installing a new bathroom or a new kitchen or getting a new roof to increase the sale price that one can obtain for a given property. The concept of valuing a property in view of property upgrades is a fundamental economic practice that is well established in the real estate industry. As is discussed in the specification in paragraphs 004-006 the prior art tracks property information to make recommendations by having a property inspections performed by a licensed home inspector. Discussed is how conventional approaches to determining the condition of a property exist and paragraph 007 discloses the issue of a home inspector being subjective in nature. The invention is determining a property score that represents the condition of property, just as home inspections are known to do as the background art for the claimed invention indicates. The assessment or determination of the condition of a property based on information about the property is a concept that is fundamental to valuing any kind of asset and is especially ubiquitous in the real estate industry. For this reason the claimed elements represents a certain method of organizing human activities type of abstract idea.
Also, the claimed steps of creating a metric, determining a fitness index, determining a property value, and determining a property boost value, are all functions that are capable of being performed mentally by a person. The claim is simply using data about the condition of a property to determine the value of a property and how much the value may increase or has increased due to an upgrade or renovation occurring. This can be done mentally by a person.
The additional elements for claims 1, 12, and 20 are:
a computing device having a processing unit, the processing unit operatively coupled to a non-transitory computer readable medium, comprising instructions stored thereon, which, when executed by the processing unit, causes the computing device to perform the steps
This judicial exception is not integrated into a practical application (2nd prong of eligibility test for step 2A) because the additional elements of the claim when considered individually and in combination with the claim as a whole, amount to the use of a computing device with a processor and memory that is being merely used as a tool to execute the abstract idea, see MPEP 2106.05(f). The claim is simply instructing one to practice the abstract idea by using a generically recited computing device with a processor and memory to perform the steps that define the abstract idea. This does not amount to more than a mere instruction to implement the abstract idea on a computer and is akin to reciting “apply it” with a computer. This is indicative of the fact that the claim has not integrated the abstract idea into a practical application and therefore the claim is found to be directed to the abstract idea identified by the examiner.
For step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception (when considered individually and in combination with the claim as a whole) because they do not amount to more than simply instructing one to practice the abstract idea by using a generically recited computing device with a processor and memory to perform steps that define the abstract idea. This does not render the claims as being eligible. See MPEP 2106.05(f). The rationale set forth for the 2nd prong of the eligibility test above is also applicable to step 2B in this regard so no further comments are necessary. This is consistent with the PEG found in the MPEP 2106.
For claims 2, 13, displaying the property value boost is reciting more about the abstract idea. This is just providing the result of the analysis that is recited in claim 1. The claimed GUI is an additional element that is interpreted as being a general link to computer implementation for the abstract idea, and does not provide for integration or significantly more. See MPEP 2106.05(f).
For claim 3, the claimed accessing a database that includes sale prices, determining property value data from the database, and determining a property value are all elements that are part of the abstract idea. This is the act of looking up “comparables” to determine or predict a price of a given piece of property. This is part of the abstract idea. The computing device has been treated in the same manner as set forth for claim 1.
For claims 4-6, the recited determining of a high, low, and a midrange, and determining the property fitness index is in the range, and determining the property value boost are elements that are all part of the abstract idea. All of the claimed functions are part of the process of assessing the condition of the property and determining its value. The claimed elements can be also be performed mentally as was stated for claim 1. The computing device has been treated in the same manner as set forth for claim 1.
For claims 7, 17, accessing a profile, determining a recommendation to increase property value boost that is a safety, time sensitive, or recommendation to increase the value, are elements that serve to further define the abstract idea of the claims. Viewing profile data and making a determination for a recommendation as claimed can be done by a person mentally, and is part of the abstract idea when one is looking at increasing the value of property. The computing device has been treated in the same manner as set forth for claims 1, 12.
For claims 8, 18, the display of the recommendation is considered to be part of the abstract idea. The GUI is an additional element and is interpreted as being a general link to computer implementation for the abstract idea, and does not provide for integration or significantly more. See MPEP 2106.05(f). The computing device has been treated in the same manner as set forth for claim 1.
For claim 9, the claim is reciting more about the same abstract idea of claim 1. Comparing features and determining missing features along with a recommendation are all elements that are part of the abstract idea. This is just looking at data to make a mental determination and a mental recommendation that is done in the context of the certain method of organizing human activities. The computing device has been treated in the same manner as set forth for claim 1.
For claims 10, 19, the generation of the report is part of the abstract idea. People can generate reports using pen and paper. This is part of the abstract idea. The computing device has been treated in the same manner as set forth for claim 1.
For claim 11, the claimed data that is recited as being part of the fitness metric are reciting information per se and is part of the abstract idea. No further additional elements have been claimed for consideration at the 2nd prong or step 2B.
For claim 14, the claimed accessing a database that includes sale prices, determining sale prices from the database, receiving user input, and determining a property value in the manner claimed, are all elements that are part of the abstract idea. This is the act of looking up “comparables” to determine or predict a price of a given piece of property and using input data from a user. This is part of the abstract idea. The computing device has been treated in the same manner as set forth for claim 12.
For claim 15, the determining of the differences and determining a range is reciting elements that are part of the abstract idea. The computing device has been treated in the same manner as set forth for claim 12.
For claim 16, the claimed correlating of a range for the property to one or more thresholds, is reciting an association is being made between data. This is part of the abstract idea and can be done mentally by a person. The computing device has been treated in the same manner as set forth for claim 12.
For claims 21, 26, the claimed historical report and the listing by date of maintenance actions are elements that are part of the abstract idea. Creating reports and the content of the reports are elements that are part of the abstract idea. The computing device has been treated in the same manner as set forth for claim 12.
For claim 22, 23, determining user input into a profile and receiving a status message are elements that are part of the abstract idea. This can done by asking a person for an update regarding an action related to a property. This is part of the abstract idea of the claims.
For claim 24, the associating of categories to actions as claimed, is reciting more about the abstract idea. An association is a correlation and is an abstraction itself. This is something that a person can perform mentally. The computing device has been treated in the same manner as set forth for claim 12.
For claim 25, the entering of text, reeving user notes and storing the notes are elements that serve to define more about the abstract idea. The computing device has been treated in the same manner as set forth for claim 12.
Therefore, for the above reasons, claims 1-26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-3, 7, 8, 10-14, 17-19, is/are rejected under 35 U.S.C. 103 as being unpatentable over Bentley, III, et al. (20190251520) in view of Humphries et al. (11093982) and further in view of NPL reference “How to calculate home appreciation” (2020).
For claims 1, 2, 12, 13, Bentley teaches a system and method for determining a property fitness index for a property using a fitness metric. See paragraphs 007, 008, 056, 057 as examples. This satisfies the claimed creating or updating a property fitness index. Bentley also teaches that property value is determined, see paragraph 134 that discloses property value as being one of the pieces of information that can be displayed to the user.
Not disclosed is that a property value boost is determined using a product of the property value and an incremental factor, where the incremental factor is based on behavior of the user in the property (such as upgrades or renovations that were done) and information such as a state of the property. This has been interpreted as being the determination of an amount that a property is expected to increase in value due to a home improvement or other maintenance action being performed.
Humphries teaches a system and method that is used to determine the effect that home improvements have on a predicted sale price of a home (a property value boost), and that is used to determine the effect that home improvements have already had on an already sold home. See the Overview in column 2, lines 25-62. Also see column 3, lines 19-39 where it is disclosed that home improvements are known to raise the resale value of a property. Disclosed is that if you take the value of the home without the improvements and compare it to the value of the home (as sold) that has the improvements, you can determine how much in price the improvement contributed to the overall price of the home. Also, see column 3, lines 66-column 4, line 12. Humphries teaches that information for a home to be valued is obtained, see column 7, lines 29-38. For the home to be valued, information about the home before any improvements are made is used to value the home. Humphries teaches data that represents the home improvements that have been made or that are contemplated as being made, see column 4, lines 21-58. Column 5, lines 9-18 teaches that one can determine the contribution that each home improvement has made to the overall price for the home (sold or predicated sale price). Also see column 5, lines 63-column 6, line 3, where Humphries teaches that one can predict the sales price of a home based on a valuation that takes into account the home improvements that have been done.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide Bentley with the further ability to determine a property value boost (determine how much increase in price an improvement contributes has on the overall price of the home) as taught by Humphries, so that the owner would be able to understand the effect that certain home improvements would have on the value of the property. This is something that is well known in the art and would have been obvious to provide to Bentley.
With respect to having the property value boost calculated as a product of the home value and an incremental factor, this is claiming the multiplication of the home value with another value to arrive at a new home value. The NPL article “How to calculate a home appreciation” teaches that it is known in the art to calculate an estimated future home value by using an equation that takes the home value at the current time and multiplies it by an appreciation factor (an appreciation rate) to arrive at a new value. The appreciation rate is indicative of the expected increase in value that for the home. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide Bentley as modified with Humphries with the further ability to multiply the home value by an appreciation rate to arrive at a future expected home value. This would have been obvious to one of ordinary skill in the art because this is a well known formula that is used to calculate a home value for a future time.
The recitation to the incremental factor being based on the behavior of the user and the state of the property is not claiming anything further to the claimed “product” of the property value and the incremental factor, which is claiming multiplication of two numbers Reciting what the factor is based on is not claiming anything to the use of the factor in the claims and is satisfied by the above. Alternatively, when one accounts for Humphries recognizing that home improvements can increase the value of a property, it would have been obvious to have the appreciation rate be representative of the property state and any renovations that the user has undertaken (user behavior) so that the new property value is representative of the actual property and it expected state when upgrades or renovations are performed.
For claims 3, 14, Humphries teaches the act of determining comparable properties that also have the same home improvement. See column 3, lines 46-65, column 7, lines 20-65. Properties that have had the same home improvement are identified and used as comparable properties. This is done so that the data set that is used is comparable to the home being valued in terms of being similar and having a similar or same home improvement having been performed. This has been provided to Bentley via claim 1 and is satisfied by the combination.
For claims 7, 8, 17, 18, see paragraph 065 of Bentley where the claimed types of recommendations are disclosed. The information for the property in the form of profile is used to develop recommendations that are displayed to a user. This is taught by Bentley.
For claims 10, 19, see paragraphs 058, 070, of Bentley, where the generation of reports is disclosed that summarize property information. This satisfies what is claimed.
For claim 11, as stated above, reciting what the incremental factor is based on is not reciting anything further to the claimed system. The claim simply uses the incremental factor by multiplying it by the home value to obtain the property value boost. How the factor is arrived at and what it is based on does not receive weight because the “wherein” clause of the claim is directed to non-functional descriptive material. The claim does not positively recite that the factor is being determined so reciting what it is based on does not define anything to the product of the factor and the home value, and it does not define anything to the incremental factor itself. The prior art combination satisfies what is claimed.
Claim(s) 20-26 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kalra et al. (20140316908).
For claims 20-26, Kalra teaches a system and method for compiling property history information into a database and that can read using a GUI in the form of notes or reports (both of which are just information). Paragraph 019 teaches a property record as including property improvement records that are provided via the Web, and requires a processor and memory as claimed. Paragraph 038 teaches that information about home improvements is stored after being received from a user, and the information is incorporated into a log for the property that is populated with the action and a date. Upon receipt the log is updated with the received information, and satisfies auto-populating. The various home improvements that are documented satisfy the claimed action relating to a property. The user can submit information as claimed via a status message (just a message), and an alternative method (claim 23).
Response to arguments
The double patenting rejection has been withdrawn in view of the fact that the cop-pending application has been abandoned and is not pending anymore. This moots the rejection.
The traversal of the 35 USC 101 rejection is not persuasive.
On page 1 of the remarks the applicant argues that the eligibility of the claims is self-evident and argues that the claims recite additional elements to provide for integration into a practical application and/or significantly more.
On pages 1-6 the applicant argues that the claims are not reciting an abstract idea. On page 3 the applicant argues that the examiner has failed to make a prime facie case of claim ineligibility because the examiner has not stated how the claims recite an exception rather than merely involving one. This is not persuasive because the rejection of record makes a clear articulation of why the claims have been found to be reciting an abstract idea at step 2A. The argument to the contrary is not persuasive.
On page 3 the applicant argues that the claims do not recite a mental process because they recite a very narrowly drafted never done before system for monitoring and managing property conditions using upkeep and behavior based data to calculate a property fitness index and determine a property value boost. The applicant argues that these actions cannot be performed in the human mind. At the outset, the applicant is reminded that the claims were found to be a certain method of organizing human activities in the form of a fundamental economic practice. While the claimed steps can be performed mentally, the claims were rejected as being a certain method of organizing human activities. The applicant is not addressing that aspect of the rejection but is focusing in on the mental process category. This does not address the first and foremost grounds of rejection which is that the claims are reciting a certain method of organizing human activities in the form of a fundamental economic practice.
With respect to the argument that the recited steps that define the abstract idea cannot be performed mentally; the argument is not persuasive. Nothing that is claimed is beyond the reach of a mental process. A person can mentally calculate scores and can make determinations of the property value boost by multiplying two numbers together. The argument to the contrary is not persuasive. The examiner notes that “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category.” Elec. Power Grp., 830 F.3d at 1354; see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (“‘Methods which can be performed entirely in the human mind are unpatentable’” (id., quoting Gottschalk v. Benson, 409 U.S. 63, 67 (1972))); 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). “[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.” Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012).
On page 4 of the reply the applicant argues that the claims are reciting a computer based system that is limited to a very narrow specific application and are eligible for that reason. This is not persuasive. As to the narrowness of a claimed judicial exception, this does not automatically equate to eligibility. In buySAFE, Inc. v. Google, Inc. (Fed. Cir. 2014), the court stated that:
"abstract ideas, no matter how groundbreaking, innovative, or even brilliant, are outside what the statute means by "new and useful process, machine, manufacture, or composition of matter", and reference is made to Myriad by the court for this position. Also stated in buySAFE is "In defining the excluded categories, the Court has ruled that the exclusion applies if a claim involves a natural law or phenomenon or abstract idea, even if the particular natural law or phenomenon or abstract idea at issue is narrow. Mayo, 132 S. Ct. at 1303. The Court in Mayo rejected the contention that the very narrow scope of the natural law at issue was a reason to find patent eligibility, explaining the point with reference to both natural laws and one kind of abstract idea, namely, mathematical concepts.
From SAP AMERICA, INC., Plaintiff-Appellee v. INVESTPIC, LLC
“We affirm. We may assume that the techniques claimed are “[g]roundbreaking, innovative, or even brilliant,” but that is not enough for eligibility. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013); accord buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352 (Fed. Cir. 2014). Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89–90 (2012); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.”); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (same for obviousness) (Symantec). The claims here are ineligible because their innovation is an innovation in ineligible subject matter. Their subject is nothing but a series of mathematical calculations based on selected information and the presentation of the results of those calculations (in the plot of a probability distribution function). No matter how much of an advance in the finance field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the nonabstract application realm. An advance of that nature is ineligible for patenting.”
Therefore, the narrowness of a claimed judicial exception is not dispositive of the eligibility inquiry and while the applicant argues the claims are novel and never before done, novelty or non-obviousness does not equate to eligibility. The argument is not persuasive.
On the bottom of page 4 the applicant argues that the claims cannot be performed mentally. The applicant generally alleges that the human mind cannot process the recited information and cannot determine a property value boost. The claim defines the property value boost as being a product of an incremental factor and the property value. This is claiming the multiplication of the property value by a factor, such as by multiplying $500,000 (property value) with a factor of 1.1 to arrive at a property boost value of $550,000. It is not reasonable to argue that this is not capable of being performed mentally when all that is happening is multiplication using basic math that one can do in their head. The argument and allegations that the claimed steps cannot be performed mentally are not persuasive. The claim does not recite any particular kind of data that cannot be analyzed mentally by a person, and the fact that a computer can process more data than a person can in a faster manner is why people use computers in the first place. In terms of using computers to perform a judicial exception, in Intellectual Ventures v. Capital One Bank (Fed. Cir. 2015), the court stated:
“Nor, in addressing the second step of Alice, does claiming the improved speed or efficiency inherent with applying the abstract idea on a computer provide a sufficient
inventive concept. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”); CLS Bank, Int’l v. Alice Corp., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) aff’d, 134 S. Ct. 2347 (2014) (“[S]imply appending generic computer functionality to lend speed or efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility.” (citations omitted)).” The court also stated that “As discussed above, our precedent is clear that merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.”
The examiner also notes that this issue was also addressed in Bancorp Services LLC v. Sun Life Assurance Company of Canada (Fed. Circuit 2012), where the court stated:
“Modern computer technology offers immense capabilities and a broad range of utilities, much of which embodies significant advances that reside firmly in the category of patent-eligible subject matter. At its most basic, how-ever, a “computer” is “an automatic electronic device for performing mathematical or logical operations.” 3 Oxford English Dictionary 640 (2d ed. 1989). As the Supreme Court has explained, “[a] digital computer . . . operates on data expressed in digits, solving a problem by doing arithmetic as a person would do it by head and hand.” Benson, 409 U.S. at 65. Indeed, prior to the information age, a “computer” was not a machine at all; rather, it was a job title: “a person employed to make calculations.” Oxford English Dictionary, supra. Those meanings conveniently illustrate the interchangeability of certain mental processes and basic digital computation, and help explain why the use of a computer in an otherwise patent-ineligible process for no more than its most basic function—making calculations or computations—fails to circumvent the prohibition against patenting abstract ideas and mental processes. As we have explained, “[s]imply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible.” Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
To salvage an otherwise patent-ineligible process, a computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not. See SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010) (“In order for the addition of a machine to impose a meaningful limit on the scope of a claim, it must play a significant part in permitting the claimed method to be performed, rather than function solely as an obvious mechanism for permitting a solution to be achieved more quickly, i.e., through the utilization of a computer for performing calculations.”). Thus, as we held in Fort Properties, Inc. v. American Master Lease LLC, the limitation “using a computer” in an otherwise abstract concept did not “‘play a significant part in permitting the claimed method to be performed,’” 671 F.3d 1317, 1323 (Fed. Cir. 2012) (quoting Dealertrack, 674 F.3d at 1333), and thus did not “impose meaningful limits on the claim’s scope,” id. (quoting CyberSource, 654 F.3d at 1375). The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims. See Benson, 409 U.S. at 67 (invalidating as patent-ineligible claimed processes that “can be carried out in existing computers long in use, no new machinery being necessary,” and “can also be performed without a computer”).
Nothing is claimed that is using a computer to process information in a manner that a human cannot perform. The claims are using a computer to calculate a value for a home and to multiply numbers together. This is using a computer for its most basic function, which is to perform repetitive calculations that a person can perform in their mind. This does not impart eligibility to the claims. The argument is not persuasive. The examiner finds that the recited steps that define the abstract idea can be practically performed in the human mind, even though this is not the primary grounds of rejection for the claims under 35 USC 101.
The argument on pages 5-6 and the citation to Ex Parte Hanman is noted. A PTAB decision does not supersede in any manner USPTO eligibility guidance, CAFC caselaw precedents, or SCOTUS precedent when it comes to using a computer to perform calculations that are valuing the price of a home and that can be done mentally. The cited PTAB case is not persuasive to show that the controlling law on this issue is not longer valid. The examiner has cited to actual CAFC cases that contradict the position being argued. The argument is not persuasive.
No argument has been presented for step 2A with respect to the claims reciting a certain method of organizing human activities.
On pages 6-8 the applicant argues that the claims are integrated into a practical application. The applicant argues on page 7 that the claims meaningfully limit any judicial exception. The applicant argues that this is because the exception is being applied a way that is more than generally linking the exception to a particular technological environment. The applicant argues that others are free to evaluate properties using different methods from that which is claimed. This is an argument that the narrowness of the exception makes the claim eligible. This is not persuasive for reasons already addressed. A claim does not have to be so broad that it encompasses all ways to value a property as even narrowly drafted abstract ideas are still abstract ideas. The specific way that the applicant is valuing the property and determining the property value boost are what defines the abstract idea, not some broader version of what is claimed. The argument is not persuasive.
On page 8 the applicant argues that the invention takes upkeep data into a structured valuation model and produces a quantitative value assessment and real time recommendations and reports. The applicant argues:
Applicant has arranged these components together in a novel way to provide a practical application in the form of a system that enables users to track, assess, and enhance the value of properties based on real-time engagement and condition data, not just static market history. The present invention creates a dynamic valuation and management system that alters its recommendations and calculations based on nuanced property traits and user behavior, the likes of which have not heretofore been available. Applicant has a legal right to put these components together in a novel way to create a patentable practical application of a new property management and valuation system, and to prevent others from replicating this narrowly tailored approach.
The above is arguing the abstract idea of the claims while not addressing any of the additional elements. The abstract idea is itself defined by what is being argued. As has already been addressed, novelty of a claimed invention over prior art does not mean that a claim is eligible. Arguing that the claims are put together in a novel way to create a patentable practical application is not persuasive to show that there are any additional elements or combination of additional elements that would render the claims integrated into a practical applicant, when the claim is viewed as a whole. Novelty and eligibility are two separate issues. The eligibility analysis is not based on prior art. The argument is not persuasive.
On pages 8-10 the applicant argues that the claims recite significantly more and are eligible. The applicant argues that the examiner has not done a proper analysis at step 2B. The applicant argues that the claims are eligible because they are a particular application and an improvement to current property condition tracking and valuation systems. The applicant argues that the claims for the first time, allows users to be guided through a property management system that calculates and adjusts a property value based on current and real time data. The applicant argues that the claimed method was not previously known. As was already addressed, the perceived novelty or non-obviousness of a claimed invention does not equate to eligibility. The applicant argues what the system allows to occur, which is arguing the abstract idea, and agues that this method is not previously known. This is not addressing any of the recited additional elements and is not persuasive to show that the claims are eligible by reciting significantly more.
With respect to the well understood, routine, and conventional argument on pages 10-11, the argument is not persuasive. There are no additional elements at the 2nd prong of the eligibility analysis that were found to be an insignificant extra solution activity that would require the examiner to undergo a well understood, routine, and conventional inquiry at step 2B. Examiners do not have to prove with evidence that a claimed invention is well understood, routine, and conventional in the art at step 2B for an eligibility rejection to be proper. To require such would be injecting a prior art analysis into the eligibility inquiry that does not exist in the USPTO guidance and that is contradicted by controlling caselaw. While it is true that if one has an insignificant extra solution activity at the 2nd prong, that element has to be evaluated for its well understood nature at step 2B, with evidence; however no such situation exists with the pending claims and the rejection of record. For this reason the argument is not persuasive. Arguing that the claimed invention is not well understood, routine, or conventional is not persuasive.
On pages 11-13, the applicant argues that the claims are not a mental process. As already stated, the claims were found to be a certain method of organizing human activities that just happen to be able to be performed mentally. The applicant argues that the examiner has treated the claims at a high level of generality that is untethered from the claims. The applicant argues that the claims are not directed to a mental process because the claims recite a system that can calculate a property fitness index from data and determine a property value boost. The applicant is doing little more than to generally allege that the claimed invention cannot be performed mentally. This is not persuasive for reasons already addressed by the examiner with respect to this argument. The argument that the claims are eligible because they recite a system to perform the recited steps that define the abstract idea is not persuasive. The mere presence of a machine in the claims does not preclude a claimed process from being a mental process. As is set forth in MPEP 2106.04(a)(2)(III), “Claims can recite a mental process even if they are claimed as being performed on a computer. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures "can be carried out in existing computers long in use, no new machinery being necessary." 409 U.S at 67, 175 USPQ at 675. See also Mortgage Grader, 811 F.3d at 1324, 117 USPQ2d at 1699 (concluding that concept of "anonymous loan shopping" recited in a computer system claim is an abstract idea because it could be "performed by humans without a computer").”. Therefore, arguing that the claims are not directed to a mental process because the claims recite a system is not a persuasive argument. As has already been addressed, what is claimed can be performed by a person mentally. The claim defines the property value boost as being a product of an incremental factor and the property value. This is claiming the multiplication of the property value by a factor, such as by multiplying $500,000 (property value) with a factor of 1.1 to arrive at a property boost value of $550,000. It is not reasonable to argue that this is not capable of being performed mentally when all that is happening is multiplication using basic math that one can do in their head.
The argument on page 12 that a machine is being improved by the claimed invention is not persuasive. The computing device of the claims is not being improved in any manner by the recited functions being executed by the computing device. The allegation that technology is being improved is not persuasive. The result of the claim is a value for a home after a person has done renovations or upgrades. This does not serve to improve a machine or the technology recited in the claims.
The applicant again argues that the claims have never been implemented before and have not been identified by a court as an abstract idea. A claimed invention not having been implemented before is an argument that novelty equates to eligibility. This is not persuasive for reasons already addressed by the examiner. As for no court having found the pending claims to be an abstract idea, this is not persuasive. A court does not have to already found pending claims to be an abstract idea to reject the claims as being directed to an abstract idea. Also, if that were true, then the Alice claims would have been eligible because no court previously found those claims to be an abstract idea. The argument is not persuasive.
On page 13 the applicant argues the Vanda memo. The applicant argues that the claims recite and are applying a novel system for applying relationships between property maintenance behaviors, etc.. This is not persuasive. The Vanda memo has no nexus to the claimed invention and all that the applicant has done is to allege that the memo is relevant. The claims having nothing to do with preempting relationships between drugs. The claims are calculating a value for a home. Vanda is not relevant and does not show that the claims are eligible.
The 35 USC 101 rejection is being maintained.
With respect to the prior art traversal of claims 1-19, the arguments are considered to be moot based on a new grounds of rejection that was necessitated by amendment. This moots the arguments.
For claim 20, the applicant argues that Kalra does not auto-populate a log. The applicant argues that auto-population is largely or wholly involuntary and that the art does not teach this feature. This is not persuasive and is arguing an interpretation for the term “automatic” that is not commensurate with how the courts have treated this term. With respect to the term automatically, it does not preclude human involvement in the population of the log. See Collegenet, Inc. v Applyyourself, Inc. (CAFC, 04-1202,-1222,-1251, 8/2/2005). In the cited prior art, paragraph 038 teaches that information about home improvements is stored after being received from a user, and the information is incorporated into a log for the property that is populated with the action and a date. Upon receipt of the data, the log is updated with the received information, and therefore satisfies auto-populating. The claims use of "comprising" means that additional, unrecited elements are not excluded. Such elements could include human actions to expressly initiate the automatic storing or inserting of the data into the log. Once the information is received, it will be automatically stored in the log as claimed, without human intervention. Just like sending an email, once a user hits the send button, the email is sent. That is an automatic sending of the email that is initiated by a user. The same can be said of the receipt of data and the automatic storage into a log. The argument is not persuasive.
Also, the applicant argues limitations that are not found in claim 20 with respect to placing the log into a report. The argument regarding the report on page 15 is not commensurate with the actual scope of claim 20. The argument is not persuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DENNIS WILLIAM RUHL whose telephone number is (571)272-6808. The examiner can normally be reached M-F 7am-3:30pm.
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/DENNIS W RUHL/ Primary Examiner, Art Unit 3626