Ex Parte Scheibe et al

Patent Trials and Appeals Board

Apr 10, 2019

12198252 - (D) (P.T.A.B. Apr. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/198,252
86012 7590
VLP Law Group LLP
555 Bryant Street
Suite 820
Palo Alto, CA 94301
08/26/2008
04/12/2019
FIRST NAMED INVENTOR
Paul 0. Scheibe
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
M-17317 US 3748
EXAMINER
SITTNER, MICHAEL J
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
04/12/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
patents@vlplawgroup.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ExpartePAULO. SCHEIBEandJAYB. SCHEIBE
Appeal2018-003487 1
Application 12/198,252
Technology Center 3600
Before JEREMY J. CURCURI, ADAMJ. PYONIN,and
NABEEL U. KHAN, Administrative Patent Judges.
PYONIN,Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a). We have
jurisdiction under35 U.S.C. § 6(b).
We affrrm.
1 The identified real party in interest is Landmark Screens, LLC. App. Br. 2.
Appeal 2018-003487
Application 12/198,252
STATEMENT OF THE CASE
Introduction
The Application is directed to "web services and methods for
supporting an electronic signboard." Title. Claims 1-20 and 22--48 are
pending. See App. Br. 6. 2 Claim 1, the sole independent claim, is
reproduced below for reference ( emphases added):
1. An advertising support system, comprising:
one or more electronic display systems, each electronic
display system comprising one or more electronic display
devices connected by a local network maintaining a local time;
an operation center capable of data communication with
the electronic display systems over a computer network, the
operation center (i) including a time service that provides
system-wide synchronization to the local networks, such that
content is displayed on electronic display devices in each of the
electronic display systems at appointed local times that are
synchronized to the time service, and (ii) including a database
that maintains content and operational data of each of the
electronic display system; and
a client service system communicating with the operation
center and a user from a client of the advertising support system
over the computer network, wherein the client service system
provides a controlled access interface that allows the user remote
access to the database of the operation center and wherein the
controlled access interface includes a web service which allows
the user
(i) to communicate advertising content to the operation
center,
(ii) to access data relating to the electronic display
systems, including a current playlist of images being displayed
on any display device of the electronic display systems,
2 Separately, we note Appellants' Appeal Brief appears to be printed with
text that lacks clarity and contrast between the paper and the writing thereon
See 37 C.F.R. 1.52(a)(l)(iv)and37 C.F.R. 1.52(aXl)(v).
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Application 12/198,252
(iii) to view content up to within one second after the
content is displayed on an electronic display device in any of the
electronic display systems, and
(iv) to initiate a message service which allows viewer
responses to the images displayed on any display device of the
electronic. display systems to be directed to a third party message
handler.
References and Rejecti ans
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Pallante
Meshkin
Hwang
Mikurak
Newville
US 2003/0028495 Al
US 2004/0122735 Al
US 2005/0081158 Al
US 2006/0178918 Al
US 7,278,518 B2
Feb.6,2003
June 24, 2004
Apr. 14, 2005
Aug. 10, 2006
Oct. 9, 2007
Claims 1-20 and22--48 stand rejected under 35 U.S.C. § 101 as
being patent ineligible. Ans. 3.
Claims 1-20, 25--40, and43--48 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Newville, Pallante, andMikurak. Final
Act. 3, 31.
Claims 22 and23 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Newville, Pallante, Mikurak, and Applicant Admitted
Prior Art. Final Act. 30.
Claim 24 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Newville, Pallante, Mikurak, and Hwang. Final Act. 32-
33.
Claims 41 and42 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Newville, Pallante, Mikurak, and Meshkin. Final Act. 33.
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Application 12/198,252
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. Arguments Appellants could have made but chose not to make
are deemed to be waived. See37 C.F.R. §4I.37(c)(l)(iv). We discuss each
of the statutory grounds of rejection, in tum.
A. 35 USC§ 101
The Examiner determines the claims are patent ineligible under 35
U.S. C. § 101, because the claims are directed to an abstract idea and do not
recite "meaningful limitation( s) to transform the abstract idea into a patent
eligible application of the abstract idea such that the claim( s) amounts to
significantly more than the abstract idea itself." Ans. 6; see also Alice Corp.
Pty. Ltd. v. CLS Bank Int 'l, 573 U.S. 208, 217(2014) ( describing the two-
step framework "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts").
After the docketing of this Appeal, the USP TO published revised
guidance on the application of§ 101 ("Guidance"). See US PTO' s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) ("Memorandum"). Under the Guidance, the office first looks to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
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Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then look to whether
the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field ( see
MPEP §2106.05(d)); or
( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
I. Step 2A, Prong One
Appellants argue the Examiner errs in determining claim 1 is abstract,
because claim 1 recites a timing service, and the "recited timing service is
not an abstract idea but part of the design and architecture of the recited
operation center." Reply Br. 3.
We determine claim 1 recites an abstract idea pursuant to Prong One
of the Guidance. See Memorandum, Section III (A) (1) (Prong One:
Evaluate Whether the Claim Recites a Judicial Exception), 84 Fed. Reg. at
54. Claim 1 recites an "advertising support system" including an interface
"which allows the user (i) to communicate advertising content to the
operation center." These recitations are for creating advertisements-
"advertising, marketing or sales activities or behaviors"-which are
"fundamental economic principles or practices" and therefore"[ c ]ertain
methods of organizing human activity." Memorandum, 84 Fed. Reg. at 52.
Accordingly, we conclude the claim recites an abstract idea.
II. Step 2A, Prong Two
Upon determining the claim recites an abstract idea, the claim is
evaluated as to whether, as a whole, it "integrates the recited judicial
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exception into a practical application of the exception." Memorandum,
Section III (A) (2) (Prong Two: If the Claim Recites a Judicial Exception,
Evaluate Whether the Judicial Exception Is Integrated Into a Practical
Application). We determine that, pursuant to Prong Two of the Guidance,
claim 1 is patent eligible.
Appellants argue claim 1 is significantly more than an abstract idea,
because the claimed "operation center's time service is a reference to a
system-wide synchronization mechanism that allow local networks at
different geographical locations to synchronize their operations to a single
time standard (e.g., a national standard), accurate to five milliseconds or
less," and "[a]s discussed on [Specification] page 3, lines 15-18, the time
service allows various control operations, such as time-stamps to sequence
database records and to control the display systems." Reply Br. 4.
We are persuaded claim 1 "integrates a judicial exception into a
practical application," because it "will apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception." Memorandum, 84 Fed. Reg. at 54.
Particularly, as discussed by Appellants (see Reply Br. 3--4), claim 1
integrates the abstract advertising-related recitations into a system
comprising displays, an operation center, and a client service system, which
is a specific arrangement of components and integral use of machines to
achieve performance of a method. See MPEP 2106.05(b) (I) and (II). The
recited system limitations are additional elements that result in the claim
"implement[ing] a judicial exception with, or us[ing] a judicial exception in
conjunction with, a particular machine or manufacture that is integral to the
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claim." Memorandum, 84 Fed. Reg. at 5 5. As such, the claim is patent
eligible because is not directed to a judicial exception under Step 2A of the
Guidance. See id. at 54--55.
Based on the foregoing, we do not sustain the Examiner's patent
eligibility rejection of independent claim 1, or of the claims dependent
thereon.
B. 35 USC§ 103
We adopt the findings of fact made by the Examiner in the Final
Rejection and Examiner's Answer as our own. We concur with the
conclusions reached by the Examiner for the reasons given in the
Examiner's Answer. We add the following primarily for emphasis.
In the Answer, the Examiner fmds the claimed '"operation center'
reads on Newville' s system including 'subsystems 204' which ... includes
'building se[r]ver28', with its owndatabase." Ans. ?;Newville Fig. 12;
14:34--49. The Examiner further fmds claimed "client service system
provides a controlled access interface that allows the user remote access to
the database of the operation center and wherein the controlled access
interface includes a web service" reads on Newville's teachings of"a system
[ a client service system] including .... BO M interface 200 [] shown to
include BOM interfaces (BOMGUI) 202 which communicate with one or
more building subsystems 204 [ operation center]." Ans. 8 ( quotations
omitted); Newville Fig. 12; 14:20-15:17.
Appellants argue "the Examiner failed to designate this rejection
should be designated as a new ground of rejection," as "the Examiner's
Answer relies on different structures for Claim 1 's 'operation center' and
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'client service system' limitations than those on which the Examiner
previously relied." Reply Br. 5. Failure to designate a new ground is a
petitionable matter, and not an appealable matter. See MPEP
§§ 1201, 1207.03 (b ). Thus, the Examiner's rejection is properly before us
on appeal.
Appellants address the Examiner's Answer fmdings:
As Newville does not disclose or suggest providing a web service
in BOM interface 200 -- on which the Examiner now construes
the "client service system" - and neither does the Examiner
provides teachings or motivation for incorporating such a web
site into BOM interface 200, Claim 1 's limitation "the client
service system provides a controlled access interface that ...
includes a web service which allows the user (i) to communicate
advertising content to the operation center ... " remains unmet.
Reply Br. 8.
We are not persuaded the Examiner errs. Appellants' Specification
defmes a web service as "a software system that is designed to support
machine-to-machine interaction over a network." Spec. 4 :21-22.
Newville's Building Operations Manager Interface (BOM Interface),
similarly, is used to "communicate with one or more building subsystems
204" including "building server 28." Newville 14:30-35; Ans. 8. Further,
Newville's BOM Interface "allows building managers to deliver messages to
building tenants who can view the messages on the display units," and such
messages can be "Advertising messages" based on HTML or converted to
the HTML format. Newville 14:50-15:51; Ans. 8-9. Consistent with the
Specification, we agree with the Examiner that Newville teaches or suggests
"the client service system provides a controlled access interface that ...
includes a web service which allows the user (i) to communicate advertising
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contentto the operation center," within the meaning of the claim. See Ans
8; Newville Fig. 12; see also Appellants' Fig. 1.
Further, the Examiner finds the combination of cited references
teaches or suggests the limitations of claim 1 (see Ans. 9), and reasons that it
would have been obvious to one of ordinary skill in the art at the time of the
invention to incorporate Pallante' s teachings of providing a time service and
the real time messaging and interface functionalities of Mikurak into the
advertising support system taught by Newville (see Ans. 9-14). See Pallante
,r,r 154--155; Mikurak,r,r 230-234, 1283-1290, 1703. We fmd the fmdings
and reasons of the Examiner in the Answer to be rational and supported by
evidence drawn from the record, and Appellants do not challenge these
aspects in the Reply Brief. Nor do Appellants' show reversible error in the
Examiner'srejectionofthedependentclaims. See Ans. 14; Reply Br. 10; cf
In re Baxter TravenolLabs., 952 F.2d388, 391 (Fed. Cir. 1991) ("It is not
the function of this court to examine the claims in greater detail than argued
by an appellant, looking for [patentable] distinctions over the prior art.").
Thus, we are not persuaded the Examiner's rejections are in error.
Accordingly, we sustain the Examiner's obviousness rejections of
claims 1-20 and 22--48.
DECISION
The Examiner's decision rejecting claims 1-20 and 22--48 is affrrmed.
The Examiner's decision is affrrmed because we have affrrmed at
least one ground of rejection with respect to each claim on appeal. See 3 7
C.F.R. § 4I.50(a)(l).
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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