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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on January 8, 2026 has been entered.
Terminal Disclaimer
The terminal disclaimer filed on January 8, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US Patent No. 11,587,129 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 1-20 are rejected under 35 U.S.C 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: Claims 1-20 recite a method and therefore fall into a statutory category.
Step 2A – Prong 1 (Is a Judicial Exception Recited?):
Referring to claims 1-20, the claims are directed to a manner of generating a valuation for a property based on the analysis of collected information, which under its broadest reasonable interpretation covers concepts covered under the Mental Processes and Certain Methods of Organizing Human Activity groupings of abstract ideas.
The abstract idea portion of the claims is as follows:
A method of generating a valuation for real estate property comprising: assigning a quantitative score representing an assessed condition or desirability of a first property for which a valuation is to be generated; assigning a comparative score representing an assessed condition or desirability of each of a plurality of other properties, wherein the comparative score represents the assessed condition if the quantitative score represents the assessed condition, and wherein the comparative score represents the assessed desirability if the quantitative score represents the assessed desirability; automatically comparing, [without human intervention by a controller in a computing device], the quantitative score of the first property with the comparative score of the plurality of other properties; automatically determining a first subset of the plurality of other properties refined from the plurality of other properties based on the comparison of the quantitative score and the comparative score; upon determining the first subset of the plurality of other properties based on the comparison, automatically comparing, [without human intervention by the controller], visual characteristics of one or more images of the first property with visual characteristics of one or more images of each other property in the first subset [using an image recognition algorithm]; in response to comparing the visual characteristics, determining, [without human intervention by the controller], a second subset of the plurality of other properties refined from the first subset of other properties based on the image recognition; and automatically using, [without human intervention by the controller], the second subset of other properties to generate a valuation for the first property. Where the portions not bracketed recite the abstract idea.
Here the claims are directed to concepts capable of being performed in the human mind and/or via pen and paper (including an observation, evaluation, judgement, opinion) but for the recitation of generic computer components. In the present application concepts directed to generating a valuation for a property based on the analysis of collected information. (See paragraphs 2, 5, 11, and 17). Further the claims are directed to concepts performed as part fundamental economic principles or practices or managing personal behavior or relationships or interactions between people (following rules or instructions). In the present application concepts directed to manner of generating a valuation for a property. (See paragraphs 2, 5, 11, and 17).
If a claim limitation, under its broadest reasonable interpretation, covers concepts capable of being performed in the human mind and/or via pen and paper, it falls under the Mental Processes grouping of abstract ideas. See MPEP 2106.04. Further if a claim limitation, under its broadest reasonable interpretation, covers concepts capable of being performed in either fundamental economic principles or practices or managing personal behavior or relationships or interactions between people, it falls under the Certain Methods of Organizing Human Activity. Id.
Step 2A-Prong 2 (Is the Exception Integrated into a Practical Application?):
The examiner views the following as the additional elements:
A controller. (See paragraph 59)
A computing device. (See paragraph 59)
An image recognition algorithm. (See paragraph 19)
These additional elements are recited at a high-level of generality such that they act to merely “apply” the abstract idea using generic computing components and do not integrate the abstract idea into a practical application. (See MPEP 2106.05 (f))
The combination of these additional elements and/or results oriented steps are no more than mere instructions to apply the exception using generic computing components. (See Id.) Accordingly, even in combination these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, the claim is directed to an abstract idea.
Step 2B (Does the claim recite additional elements that amount to Significantly More than the Judicial Exception?):
As noted above, the claims as a whole merely describes a method that generally “apply” the concepts discussed in prong 1 above. (See MPEP 2106.05 f (II)) In particular applicant has recited the computing components at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using generic computer components. As the court stated in TLI Communications v. LLC v. AV Automotive LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) merely invoking generic computing components or machinery that perform their functions in their ordinary capacity to facilitate the abstract idea are mere instructions to implement the abstract idea within a computing environment and does not add significantly more to the abstract idea. Accordingly, these additional computer components do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, even when viewed as a whole, nothing in the claim adds significantly more (i.e. an inventive concept) to the abstract idea and as a result the claim is not patent eligible.
Dependent claims 2-3, 6-15, and 20 further define the abstract idea as identified. Therefore claims 2-3, 6-15 and 20 are considered to be patent ineligible.
Dependent claim 4 further defines the abstract idea as identified. Additionally, the claim recites the generic controller (See paragraph 59) and computing device (See paragraph 59) for merely implementing the abstract idea using generic computing components which does not integrate the abstract idea into a practical application or adds significantly more. Therefore claim 4 is considered to be patent ineligible.
Dependent claim 5 further defines the abstract idea as identified. Additionally, the claim recites the generic controller (See paragraph 59), computing device (See paragraph 59), and text mining algorithm (See paragraph 19) for merely implementing the abstract idea using generic computing components which does not integrate the abstract idea into a practical application or adds significantly more. Therefore claim 5 is considered to be patent ineligible.
Dependent claim 16-18 further defines the abstract idea as identified. Additionally, the claim recites the generic image recognition algorithm (See paragraph 19), computing device (See paragraph 59), and text mining algorithm (See paragraph 19) for merely implementing the abstract idea using generic computing components which does not integrate the abstract idea into a practical application or adds significantly more. Therefore claims 16-18 are considered to be patent ineligible.
Dependent claim 19 further defines the abstract idea as identified. Additionally, the claim recites the existing image databases (See paragraph 21) for merely implementing the abstract idea using generic computing components which does not integrate the abstract idea into a practical application or adds significantly more. Therefore claim 19 is considered to be patent ineligible.
In conclusion the claims do not provide an inventive concept, because the claims do not recite additional elements or a combination of elements that amount to significantly more than the judicial exception of the claims. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and the collective functions merely provide conventional computer implementation. Therefore, whether taken individually or as an order combination, the claims are nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's arguments filed March 19, 2025 have been fully considered but they are not persuasive.
Applicant’s arguments, page 7 of the Remarks, regarding the double patenting rejection the Examiner finds persuasive in response to the Terminal Disclaimer being accepted. Therefore, the Examiner has withdrawn the double patenting rejection.
Applicant’s arguments, on pages 7-11 of the Remarks, regarding the 101 rejection, the Examiner finds unpersuasive.
Applicant argues that it is patentably inventive for the Applicant to have conceived of the claimed particular solution to a problem or a particular way to achieve a desired outcome as the claims changes the architecture itself, how the information flows, not just what it does. Specifically, the Examiner does not identify prior art teaching the specifically claimed ordered two step process in which a less resource intensive filtering process is first implemented to go from the largest data set to the smaller data set i.e., “automatically determining a first subset of the plurality of other properties refined from the plurality of other properties based on the comparison of the quantitative score and the comparative score” and then subsequently implements the more resource intensive filtering process to go from the smaller data set to the smallest data set “in response to comparing the visual characteristics, determining, without human intervention by the controller, a second subset of the plurality of other properties refined from the first subset of other properties based on the image recognition”. According to Applicant this is specific process is a particular solution to a problem and a particular way to achieve a desired outcome as the claims change the architecture itself in how the information flows, not just what it does.
Applicant contends that the claimed invention is a not a mere automation of manual processes as the claimed process was never a manual process but instead a patent eligible, new non-obvious, automated process that claims a very particular way to achieve a desired outcome by inventing a new process for how information flows, not just what it does.
Applicant argues contends that the claims as whole involve a specific sequence of steps that are not well-understood, conventional, or routine. According to Applicant provide a specific process for filtering a large sets of real estate properties into a smaller first subset of properties into a smaller first subset of properties and then filtering the first subset of real estate sales into a smaller first subset of properties and then filtering the first subset of real estate sales into an even smaller second subset of properties. Applicant contends this process uses a less resource intensive filtering process to go from the largest data set to the smaller data set and uses a more resource intensive filtering process to go from the smaller data set to the smallest data set.
The Examiner respectfully disagrees, first noting paragraph 23 discuss how the current conditions for valuating a property includes a professional appraiser that evaluates the condition and appearance of a property to determine the value illustrating that an individual can in fact perform the tasks of determining the attributes and the PCR scores for the condition and location score are discussed in paragraph 64. Applicant does not explain why an individual such as an appraiser could not determine a subset of the plurality of other properties refined from the plurality of other based on comparison of the quantitative score and the comparative score. The Examiner notes there is no limit on the size of the dataset process to suggest otherwise that an individual could not perform this determination as claimed. Further the Examiner views that an individual can compare visual characteristics for determining a second subset of the plurality of other properties refined from the first subset of other properties given the claims broadest reasonable interpretation.
The Examiner does not view the additional elements alone or in combination integrate the abstract idea into a practical application or add significantly more to the abstract idea, but rather serve as mere instructions to apply the abstract idea using generic computing components, as further illustrated by the associated paragraphs identified by the Examiner the Specification. There is no change in architecture but rather just in the manner the information is processed which as claimed is at most an improvement to an abstract idea or general commercial endeavor of valuating properties, which does not constitute an improvement as identified in the considerations enumerated under MPEP 2106.04 (d). The Examiner further notes that claim for a new abstract idea is still an abstract idea:
[a]s made clear by the courts, 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.” Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (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.”). In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) (“The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces.”). Specifically, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. The distinction between eligibility (under 35 U.S.C. 101) and patentability over the art (under 35 U.S.C. 102 and/or 103) is further discussed in MPEP § 2106.05(d).
Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). Applicant’s contentions that the Examiner’s characterization are not applicable are noted however the Examiner views there is no claimed aspect that would suggest an improvement to technology rather than to the abstract idea. Instead the Examiner views the additional elements are merely applied for performing the identified abstract idea. The Examiner reiterates the view the steps that Applicant contends result in a specific process based on the steps in combination the Examiner maintains are steps that could be performed in the human mind or via pen and paper or in certain methods of organizing human activity as claimed.
Therefore, the Examiner has maintained the 101 rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Berry et al. (US 20150178795) – directed to automated appraisals.
Bisson et al. (US 20180158113) – directed to appraisal report generator.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL J MONAGHAN whose telephone number is (571)270-5523. The examiner can normally be reached on Monday- Friday 8:30 am - 5:30 pm.
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/Michael J. Monaghan/Examiner, Art Unit 3629