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 12/29/25 has been entered. The examiner will address applicant's remarks at the end of this office action. Currently claims 1-7, 9-11, 13-19, 21-23, 25-29, 31-33, are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9, 21, 31, are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
For claims 9, 21, 31, the claim recites that the circle or polygon is drawn by a user entering latitude and longitude coordinates that are entered by the user. This is found to directly contradict claim 1 that recites the user as being the one that is drawing a circle or shape on the map. Claim 1 recites that the user interactive map is configured to allow a user to draw a circle or a polygon around a location of interest on the map. From the specification this is disclosed as being the user drawing directly on the map to indicate the circle or polygon (that has an irregular shape). Claim 9 is reciting that the user is entering latitude or longitude coordinates which is used by the system to draw on the map, where the user is not the one drawing the map because the system is performing that function. For this reason claim 9 contradicts what is claimed in claim 1. It is not clear if the user is drawing the map as is recited in claim 1, or if the user is merely entering latitude and longitude coordinates into the interface so that the system itself is the one actually drawing the circle or polygon on the interface. This contradiction and confusion as to the claim scope renders the claim indefinite.
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 1-7, 9-11, 13-19, 21-23, 25-29, 31-33, 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 method (claims 1-7, 9-11), a system (claims 13-19, 21-23), and a computer program product in a non-transitory machine readable storage medium (25-29, 31-33); therefore, the claims pass step 1 of the eligibility analysis.
For step 2A, the claim(s) recite(s) an abstract idea of matching entities up for co-tenancy opportunities for a property. The claims are essentially matching people/entities up so they can be roommates and share tenancy for a given location.
Using claim 1 as a representative example that is applicable to claims 13, 25, the abstract idea is defined by the elements of:
obtaining information from each of a plurality of prospective tenants regarding one or more real estate preferences of each of the plurality of prospective tenants;
obtaining geographic location information from each of the plurality of prospective tenants that indicates where each of the plurality of prospective tenants would like to conduct business; and
automatically identifying two or more of the plurality of prospective tenants that provided respective geographic location information that is within a predetermined distance threshold of each other
displaying a map, wherein the map is configured such that a user can draw a circle or polygon around a geographic location of interest, and one or more of the following dynamic information about the geographic area within the circle or polygon is automatically displayed on or adjacent to the polygon or circle: zoning information, user competitor information, and demographic information, and
wherein the displayed dynamic information about the geographic area within the polygon or circle changes in real-time in response to a user changing the size or shape of the polygon or circle
The claim(s) recite(s) an abstract idea of matching entities with each other when they desire to share tenancy with another (co-tenancy for a property). The claims are reciting the concept of matching people/entities up so they can be roommates and share tenancy for a given location. The claimed invention is broadly recited and includes the act of matching people up to be roommates for an apartment or other dwelling. Helping people/entities find a property (real estate) that allows them to share tenancy with another entity (like a roommate situation) is a commercial practice that is a certain method of organizing human activities. Real estate professionals are known to help people and businesses find properties to rent or lease. This includes obtaining information from the user about what kind of property they are looking for, the location where they are looking for property, and using any other user requirements to help them find real estate that satisfies their needs. A real estate agent can receive the claimed information and can use the information to identify other entities or persons that are looking for real estate in the same given area (the intended use of the location in terms of being for conducting business is not a limiting element of the claim) and that are looking for a co-tenant (a roommate in a broad sense). The claimed invention can be performed by a person manually by engaging with users to obtain information and using the information to match them up with other entities and real estate properties. A user can draw a circle on a map and ask for information about the area in the circle as claimed, and data for the area can be displayed in real time as claimed using pen and paper. The use of the map and allowing a user to draw a circle or polygon on the map to define an aera of interest, and providing data about the area of interest to the user is part of the abstract idea. The claimed invention represents a certain method of organizing human activities type of abstract idea that is matching entities with each other when they desire to share tenancy with another (co-tenancy for a property).
For claim 1 the additional elements of the claim are the at least one processor that is executing the claimed steps, the user devices, and the use of an interactive map that is displayed on a display screen.
For claim 13, the additional elements are the processor and memory that stores instructions to perform the steps that define the abstract idea, the user devices, and the use of an interactive map that is displayed on a display screen.
Claim 25 recites additional elements of a computer program product in a non-transitory machine readable storage medium, the reference to the user devices, and the use of an interactive map that is displayed on a display screen.
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, user devices that can display data on a display screen, and calling the map “interactive”, where the claimed computing device and user devices with a display and interactive GUI are being 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 that is communicating with user devices to perform steps that define the abstract idea. The use of the processor(s) and the user device(s) is that they are just being used a tool to execute the abstract idea. The steps of obtaining information, obtaining location and identifying the prospective tenants are all reciting generic computer operations of obtaining data (input data) and using a computer to make a determination by comparing data. This is just using the processor and user device in a manner that is akin to reciting “apply it” with a computer. This does not amount to more than a mere instruction to implement the abstract idea on a computer connected via a network such as the Internet (the web) to connect the processor to the user devices. The same is noted for the interactive map and the display screen for the user device, this is just claiming the use of a display screen of a computer to provide the data that is part of the abstract idea. This does not amount to more than instructing one to practice the invention using computers that has a display with an interactive interface (as all interfaces are). 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 a computing device with a processor and memory and user devices (that can display data and that has an interactive interface) 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 that is communicating with user devices to perform steps that define the abstract idea. The use of the processor(s) and the user device(s) is that they are just being used a tool to execute the abstract idea. The steps of obtaining information, obtaining location and identifying the prospective tenants are all reciting generic computer operations of obtaining data (input data) and using a computer to make a determination by comparing data. This is just using the processor and user device in a manner that is akin to reciting “apply it” with a computer. This does not amount to more than a mere instruction to implement the abstract idea on a computer connected via a network such as the Internet (the web) to connect the processor to the user devices. The same is noted for the interactive map and the display screen for the user device, this is just claiming the use of a display screen of a computer to provide the data that is part of the abstract idea. This does not amount to more than instructing one to practice the invention using computers that has a display with an interactive interface (as all interfaces are). This does not render the claims as being eligible because they do not recite significantly more. See MPEP 2106.05(f).
For claims 2, 14, 26, the claimed determination about restrictions for the tenants being co-tenants is reciting more about the abstract idea of the independent claims. A person can perform this step by looking up data and making a mental determination. What is claimed is considered to be further defining the certain method of organizing human activities abstract idea of the claims. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claims 3, 15, 27, the claimed determining if two or more tenants have similar real estate preferences, and transmitting generic information about each of the tenants to the other tenants is reciting more about the abstract idea of the independent claims. This is another determination that is part of matching prospective tenants to each other and that defines the certain method of organizing human activities. Finding a potential match and sending information about each other to the tenants is part of the abstract idea. This can also be done with no technology at all where the transmitting is done via a letter in the mail. The recitation to the communication network is treated as an additional element; however, this is not sufficient to amount to integration into a practical application or significantly more because this is just an instruction for one to use a processor and user devices connected by a network, as was addressed for the independent claims, to which applicant is referred. See MPEP 2106.05(f). The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claims 4, 5, 16, 17, 28, 29, the claimed determination of whether or not it is acceptable to reveal identifies based on prior agreements, and disclosing the claimed information in response to determining that it is allowed, are claim elements that serve to further define the abstract idea of the independent claims. This can done by looking at prior agreements and making a mental determination of whether or not identities can be revealed and sending the information to each of the prospective tenants. The claimed communication network and the user device are additional elements that have already been considered and address with claims 1, 13, and 25. See MPEP 2106.05(f). The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claims 6, 18, the obtaining of the one or more real estate preferences from the user is part of the abstract idea. This can be done by a person telling a real estate agents their preferences verbally. The claimed use of the interface on the display screen of the user device is reciting generic computing technology for the user device, and is an instruction for one to use a computing device such as a mobile phone or a tablet to perform the steps that define the abstract idea. The rationale set forth for claims 1 and 13 is equally applicable to claims 6, 18, with respect to the display screen. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claims 7, 19, the claimed real estate preferences is claiming data or information per se, that is part of the abstract idea. All that is claimed is the data that constitutes the preferences and which is part of the abstract idea. The claims do not recite any additional elements that provide for integration at the 2nd prong or that provide significantly more at step 2B. Therefore the claims are not considered to be eligible.
For claims 9, 21, 31, reciting that the circle or polygon is drawn from latitude and longitude coordinates entered by a user is considered to be part of the abstract idea. This is the user defining the area by using latitude/longitude coordinates and is something that a person can perform. The use of the interface associated with the interactive map has been treated as another link to generic computer implementation for the abstract idea and does not provide for integration or significantly more. See MPEP 2106.05(f).
For claims 10, 22, 32, the recitation to the further information that is being displayed on or adjacent to the map is a further embellishment of the abstract idea. The data that is displayed such as road layout information or transportation infrastructure information are elements that are part of the abstract idea. No further additional elements have been claimed for consideration other than those already addressed for claim 1, to which the applicant is referred.
For claims 11, 23, 33, reciting the types of demographic claimed is also reciting more about the abstract idea in terms of the data that is being provided to the user. This is part of the abstract idea with no further additional elements being claimed for consideration other than those already addressed for claim 1, to which the applicant is referred.
Therefore, for the above reasons, claims 1-7, 9-11, 13-19, 21-23, 25-29, 31-33, 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, 6, 7, 9-11, 13-15, 18, 19, 21-23, 25-27, 31-33, is/are rejected under 35 U.S.C. 103 as being unpatentable over Lowenberg et al. (20200349659) in view of Parker et al. (20110270705).
For claims 1, 3, 6, 13, 15, 18, 25, 27, Lowenberg teaches a computer system and method for assisting tenants in finding a co-tenant (a roommate or officemate) to share a space with. See paragraphs 002, 012. The system includes computers connected to each other that includes landlord and tenant devices (20A, 20B for example). This satisfies the claimed user devices with an interface that can display data. Lowenberg discloses the claimed step of obtaining information from each of a plurality of potential tenants by using a user device (a computer), see paragraph 26, 27. Disclosed is that information is obtained from a prospective tenant about their preferences for real estate and whether or not they are seeking a roommate or officemate, see paragraph 012. Disclosed is that geographic location information is also obtained, and that indicates where the user wants to work. In paragraph 012 it is disclosed that a person may be looking for an officemate to share a work space. That satisfies the claimed obtaining a geographic location where a user would like to conduct business, which would be the workspace the user is looking for. Lowenberg also discloses that one or more tenants are identified that also have a similar location to the user requesting a space and a roommate/officemate. This is the act of using the entered information from the various prospective tenants and using the information to match the users up with real estate spaces and with roommates if so desired. Search options are used (see paragraphs 026, 027) and results are provided to the user (see paragraph 028 where search results are disclosed as being displayed to the user). The location information is one piece of information that is disclosed as being used to match tenants with other tenants and with real estate spaces. This satisfies the claimed “automatically identifying” step. Disclosed by Lowenberg is that a location or radius for a location is used as search criteria, and that is shown in the figures, see figure 3Q as an example. Prospective tenants that are looking for similar real estate properties and that are seeking a roommate/officemate that satisfies user preferences are matched to other possible tenants and real estate. When results are found, information is provided to the user that includes the recited “non-identifying information” about each tenant. Reciting that the information is non-identifying does not define any data in particular, and given that the claim uses comprising that allows for additional elements to be present in the form of other information, any information provided to the user about a tenant satisfies what is claimed. The label of “non-identifying” does not define any specific data and does not define the step of transmitting the information to the user. Lowenberg teaches the use of a map and in figure 3Q the map is shown as including a polygon that defines a search area. Lowenberg teaches the use of a map to display the search area to the user in the form of a polygon shape.
Not disclosed by Lowenberg for claims 1, 13, 25, are the claim elements of:
displaying a user interactive map on a display screen of each of the respective user devices, wherein the user interactive map is configured such that a user can draw a circle or polygon around a geographic location of interest, and
one or more of the following dynamic information about the geographic area within the circle or polygon is automatically displayed on or adjacent to the polygon or circle: zoning information, user competitor information, and demographic information, and
wherein the displayed dynamic information about the geographic area within the polygon or circle changes in real-time in response to a user changing the size or shape of the polygon or circle.
Parker teaches a system and method for using a map to display information to a user about the area defined in the map, such as demographic information about the defined area. Parker teaches that the invention can be used for e-commerce activities such as business lists, job listings or real estate listings, see paragraphs 003. Parker is considered to be analogous to Lowenberg in this regard, both references are from the real estate field and both are using a map that allows a user to specify an area on the map to obtain more information about. Parker teaches that a user can define a region on a map, such as a polygon by drawing a polygon on the map, or a radius around a defined point, see paragraphs 016, 017, 044, and 090. Disclosed is that when a user draws a polygon on the map, the user is provided with information about the area defined by the polygon, such as demographic information (see paragraphs 007, 041) or information on the number of businesses (which is a form of competitor information). The area can also be defined by a radius, see paragraph 007, 066. Paragraph 044 teaches that the map is provided with an overlay in the form of a GUI that is used to convey information to the user on the map. This satisfies the claimed display of the information on or adjacent to the polygon as claimed. Parker also teaches that the user can change the size of the polygon such that the displayed information is changed and updated in real time, see paragraphs 49-51 where this is disclosed. A user can change the size of the defined area and in response the system will display information that is relevant for the new area defined by the polygon. This satisfies the claimed real time display of the information in response to the change in size of the polygon.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide Lowenberg with the ability to allow a user to draw a polygon on the map so that information about the region inside of the polygon can be displayed to a user, such as demographic information or information about the number of businesses (competitor information) or any other desirable information about the area (business information, job information, land parcel information, energy use, see paragraph 044). This would yield the predictable result of allowing a user in Loewenberg, who has defined a radius for a geographic area of interest on the map of Lowenberg, to be provided with further information about the defined area by displaying the information on or adjacent to the polygon as is taught by Parker.
For claims 2, 14, 26, the claimed determining if there are any restrictions on the tenants being co-tenants is satisfied by the use of the user preferences about the real estate and roommates/officemates that are being searched for by Lowenberg. If a given user has a preference for a type of roommate, or for a desired type of real estate (in terms of size, number of roommates, location of acceptable location, costs, tenancy length, see paragraph 027). The user preferences are restrictions that limit the types of properties or roommates that will be identified as search results to be displayed to the user. This satisfies what is claimed.
For claims 7, 19, see paragraph 027 of Lowenberg where user preferences of size, cost, and others are disclosed. This satisfies the claimed user preferences. A size is a size, and a cost is a cost, what you call the size or cost does not define anything to the size or cost. Also, the data that is the preferences is technically non-functional descriptive material and is just the data used to match the tenants to each other and to real estate properties. While Lowenberg teaches data that satisfies the claim breadth, any of the data that is used as a user preference satisfies the claimed data. The system will work the same regardless of the types of preferences that are used because they are just used to match up with other data, and are not functional in nature.
For claims 9, 21, 31, not disclosed by Lowenberg is that the user can enter a latitude or longitude for the drawing of the circle or polygon. The examiner notes that both Lowenberg and Parker allow a user to define an area on a map by specifying a location on the map and by indicating a radius for the defined area, that results in a circle. While not disclosed, the examiner takes official notice that geographic location can be represented by defining latitude and longitude coordinates. This is the well-known way in which a location is defined and is well known to those of ordinary skill in the art if not less than ordinary skill in the art. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide Lowenberg with the ability to allow a user to define latitude and longitude coordinates to define a location to be used for the radius on the map. This would yield the predictable result of allowing a user to enter latitude and longitude coordinates to define the radius of acceptable locations in Lowenberg, see paragraph 027.
For claims 10, 22, 32, the claim recites that the information being displayed is one of transportation infrastructure information, traffic pattern information or road layout information. With respect to the information being displayed adjacent or on the polygon, the combination of Loewenberg and Parker arrives at displaying information about the area defined by the polygon (or circle), such as such as demographic information or information about the number of businesses (competitor information) or any other desirable information about the area (business information, job information, land parcel information, energy use, see paragraph 044). This is considered to satisfy what is claimed because the claimed information that is being displayed is directed to non-functional descriptive material that does not amount to more than printed matter being displayed. The claimed information is non-functional descriptive material that is satisfied by the information that is displayed by Lowenberg. The manner in which the information is displayed is not defined by the data that is being displayed. Any demographic information or other information in Lowenberg satisfies what is claimed. Alternatively, in view of the fact that the information being displayed about the polygon area can vary, if not satisfied by Lowenberg, it would have been obvious to one of ordinary skill int the art to include information about traffic or transportation such as public transportation options so that the user can be provided with further information about the area defined by the circle or polygon on the map.
For claims 11, 23, 33, as was stated for claims 10, 22, 32, the claimed demographic information displayed by Lowenberg (as modified in view of Parker) is non-functional descriptive material that is satisfied by the information that is displayed adjacent to or on the circle or polygon (akin to claiming printed matter that is simply being displayed). The type of information being displayed does not represent a patentably distinguishing feature over the combination of Lowenberg in view of Parker. The combination of Lowenberg and Parker arrives at the display of demographic information as claimed which includes population density, see paragraph 040 of Parker. Alternatively, if one concludes that the claimed information is not directed to non-functional descriptive material, it would have been obvious to one of ordinary skill in the art to provide Lowenberg with demographic information such as income information or population information, which are two common and well known forms of demographic information. From the teaching of displaying demographic information in Parker that has been provided to Lowenberg, it would have been obvious for one of ordinary skill in the art to choose demographic information such as income or population information. This is just choosing a well-known form of demographic information about a given region that can be displayed to the user and would have been obvious for that reason.
Claim(s) 4, 5, 16, 17, 28, 29, is/are rejected under 35 U.S.C. 103 as being unpatentable over Lowenberg et al. (20200349659) in view of Parker et al. (20110270705) and further in view of Amend et al. (2003004861).
For claims 4, 5, 16, 17, 28, 29, not disclosed by Lowenberg is that it is determined whether or not there is a prior agreement for a tenant that prevents disclosure of their identity to other tenants, where upon it being acceptable to disclose the identities, an indication is received from a tenant about whether or not they want to enter into a co-tenancy lease.
Amend teaches a real estate system that allows users to search for properties, and that gives landlords access to tenant data about intertest in properties. Disclosed is that a tenant can specific whether or not to allow for their identity to be disclosed, or if the interest from the tenant in a given property is to be kept anonymous. See paragraph 099. This constitutes an agreement as claimed where the system agrees to not disclose identity in certain situations. In Amend, a tenant may not want another user knowing who they are yet, or they want to limit access to their identification information. Lowenberg recognizes in paragraph 017 that tenant data is to be kept secure and access restrictions are used to maintain the privacy of the data. Clearly, privacy is a concern of Lowenberg because paragraph 017 discloses as much. It would have been obvious to one of ordinary skill in the art as of the effective filing date of the claimed invention to provide Lowenberg with the ability to allow a user to specify that their identity initially be kept anonymous, or so that certain users will not be able to see the identity of the user, as taught by Amend, so that they can maintain their privacy at the initial search stage when being matched with other tenants and/or specific landlords. This would yield predictable results of allowing the user to control the dissemination of their identity according to an agreement.
Response to arguments
The traversal of the 35 USC 101 rejection is not persuasive. On pages 16-17 of the reply the applicant argues that the display of an interactive map on a user device, that allows a user to draw a circle or polygon on the map and be provided with information about the area within the circle or the polygon, that changes with the size of the circle or polygon, amounts to significantly more. This is a general allegation that is not making any specific argument for the examiner to consider. For the reasons set forth in the 35 USC 101 rejection of record, the claims are not found to be reciting significantly more.
On pages 17-18 of the reply the applicant argues that the pending claims are similar to hypothetical example 23, claim 4, from the USPTO eligibility examples. This is not persuasive. For example 23, the inventor improved upon previous GUIs by dynamically relocating obscured textual information of an underlying window to become automatically viewable to the user. In a graphical user interface that comprises multiple windows, the invention continuously monitors the boundaries of the windows to ascertain an overlap condition indicating that the windows overlap such that the textual information of an underlying window is obscured from a user’s view by the overlapping window. Only when the textual information of the underlying window is detected to be obscured, the invention re‐formats and moves the textual information in the underlying window to an unobscured portion of the underlying window so that the textual information is viewable by the user. When the overlap condition no longer exists, the textual information is returned to its original format and location. For example 23, claim 4 recites the limitations of displaying a first and second window, detecting an overlap condition indicating the windows overlap such that textual information in the first window is obscured from view, determining the textual information is too large to fit in an unobstructed portion of the first window, scaling the textual information based upon the calculated scale factor, automatically relocating the scaled textual information to an unobstructed portion of the first window so that it is viewable by the user, and automatically returning the textual information to its original format when the condition no longer exists. These claim limitations were found to be reciting a specific application of the mathematical algorithm that improves the functioning of the basic display function of the computer itself. The scaling and relocating of the textual information in overlapping windows improves the ability of the computer to display information and interact with the user. No such analogy can be made to the pending claims. The display of information that relates to the circle or polygon in response to a change in size does not serve to improve a graphical user interface as was the case in example claim 23. There is no reasonable nexus that can be made to example 23 for the claimed limitation reciting that as the circle or polygon size is changed, the displayed information is also changed. This is not improving a GUI like was the case in example 23. The reliance upon example 23 is not persuasive.
The applicant argues on page 18 of the reply that the claims are reciting a significant advancement in the real estate industry that fosters collaboration, and trust in the tenant location selection and procurement process, resulting in improved opportunities to access better sites at lower cost. This argument is not persuasive because it is directed at the abstract idea and the advantages that it may provide. The fostering of collaboration, fostering trust in the tenant location selection and procurement process that results in improved opportunities to access better sites at lower cost is not improving any of the technology that is recited in the claims. Even if the abstract idea where considered as an advancement in the real estate industry, the advance lies in the abstract idea and not in a practical application of the abstract idea.
The applicant also argues that the changing of the size of the circle or the polygon is improving the technology that is currently used in the real estate industry. This is not persuasive because the defining of the circle or the polygon and the user changing its size is part of the abstract idea and does not serve to improve technology. A user can draw a circle on a map and can be provided with demographic information written on paper. The user can then change the size of the circle and can be provided with more information or less information depending on the resulting size of the circle. This is not an improvement to technology and does not improve the graphical user interface art. Allowing users to adjust sizes of the circle/polygon so that they can make better informed decisions is not an improvement to technology but is an improvement that is part of the abstract idea (a user making better decisions).
The applicant also argues that the claims transform an article from one state to another. The applicant argues that the ability to change the size of the polygon or circle to cause textual information to be displayed amounts to a real time transformation of data. This is not persuasive. The applicant is reminded that an "article" includes a physical object or substance. The physical object or substance must be particular, meaning it can be specifically identified. "Transformation" of an article means that the "article" has changed to a different state or thing. Changing to a different state or thing usually means more than simply using an article or changing the location of an article. A new or different function or use can be evidence that an article has been transformed. Purely mental processes in which thoughts or human based actions are "changed" are not considered an eligible transformation. For data, mere "manipulation of basic mathematical constructs [i.e.,] the paradigmatic ‘abstract idea,’" has not been deemed a transformation. CyberSource v. Retail Decisions, 654 F.3d 1366, 1372 n.2, 99 USPQ2d 1690, 1695 n.2 (Fed. Cir. 2011) (quoting In re Warmerdam, 33 F.3d 1354, 1355, 1360, 31 USPQ2d 1754, 1755, 1759 (Fed. Cir. 1994)). Data that is being transformed is not a physical article or thing and is not eligible to be argued for the particular transformation part of the eligibility inquiry. Only real world physical objects that are being physically transformed are what is meant by a particular transformation of an article. The article cannot be data or information. The argument is not persuasive.
With respect to the comment about the claims being novel or non-obvious and that they are eligible, the examiner notes that novelty or non-obviousness over prior art does not equate to eligibility. See SAP AMERICA, INC., Plaintiff-Appellee v. INVESTPIC, LLC where the court stated:
“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.”
With respect to the prior art and the traversal of the prior art rejection, the arguments are considered to be moot based on the new grounds of rejection that is set forth for the pending claims, and that was necessitated by amendment. The new grounds of rejection moots the arguments from the applicant.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jessica Lemieux can be reached at 5712703445. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DENNIS W RUHL/ Primary Examiner, Art Unit 3626
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