12697289 (P.T.A.B. Feb. 3, 2017)

Ex Parte Scheucher

Patent Trial and Appeal BoardFeb 3, 2017

12697289 (P.T.A.B. Feb. 3, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/697,289 01/31/2010 KARL FREDERICK SCHEUCHER 8538-1-31-10 1739 119971 7590 02/03/2017 Karl F. Scheucher 7136 Eagle Mills Rd. Waite Hill, OH 44094-9636 EXAMINER SHARMA, SUJATHA R ART UNIT PAPER NUMBER 2648 MAIL DATE DELIVERY MODE 02/03/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KARL FREDERICK SCHEUCHER ____________ Appeal 2016-002623 Application 12/697,2891 Technology Center 2600 ____________ Before STEPHEN C. SIU, JUSTIN BUSCH, and CARL L. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 2–5 and 7–22, which are the only claims pending. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE The invention relates to methods for establishing communication systems, particularly for emergency situations. Abstract; Fig. 2. Claim 5, reproduced below, is exemplary of the subject matter on appeal: 1 The real party in interest is identified as Karl F. Scheucher. App. Br. 1. Appeal 2016-002623 Application 12/697,289 2 5. A method for deploying a portable communication radio coverage enhancement device, comprising the steps: selecting a tentative location for an outdoor antenna; laying a portable antenna kit with orientation toward a structure entry; extending tripod legs; standing said tripod upright with a cable organizer aimed at said structure entry; orienting a grid map at said tripod base; removing top and bottom cable retention straps of said cable organizer; aiming said outdoor antenna at a selected donor repeater site based upon said grid map at tripod base; placing a portable amplifier near said tripod base; connecting an outdoor antenna cable to an amplifier outdoor antenna port; connecting an indoor antenna cable to an amplifier indoor antenna port; powering said amplifier with delayed startup of said amplifier; pulling said indoor antenna connected to said indoor antenna cable from clips of said cable organizer; transporting said indoor antenna into said structure; and, positioning said indoor antenna near a center of work area inside said structure. App. Br. 83–84 (Claims Appendix). THE REJECTION Claims 2–5 and 7–22 stand rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. Final Act. 5–8. Appeal 2016-002623 Application 12/697,289 3 ANALYSIS The Examiner finds “The claims [independent claims 5, 7, 8] are all directed to manual steps performed by a person to install an indoor antenna and therefore [are] included in the judicially recognized exception of processes of human thinking, and systems that depend for their operation on human intelligence alone.” Final Act. 5. Regarding dependent claim 2, the Examiner finds “[t]he recited features in claim 2 are implicit part of the manual steps of turning the delay circuitry and sending it to a display and hence the structural details do not limit the method claim.” Id. The remaining claims are rejected for similar reasons. Id. 5–8. The Examiner additionally finds the claims have been examined in view of Alice Corporation Pty. Ltd vs CLS Bank International, et al. (Alice) in which examples of ineligible abstract ideas include “Certain methods of organizing human activities.’’ Ans. 6–8 (citing Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014)). The Examiner then finds claim [5]2 is a method of organizing human activity and [t]he generic components/devices performing generic computing functions at a high level of generality is not enough to transform the exception into a patentable invention. Merely using these generic computer components to perform the identified basic functions does not constitute meaningful limitations that amount to significantly more than the abstract idea. Id. at 8. 2 The Examiner refers to claim 1, now cancelled. However, it is clear from the context that the Examiner intends to refer to claim 5. Appeal 2016-002623 Application 12/697,289 4 Appellant argues the Examiner errs in finding claims 2–5 and 7–22 are directed to non-statutory subject matter. App. Br. 1–81; Reply Br. 1–27. In particular, Appellant argues the Examiner errs in finding “the claims are all directed to manual steps performed by a person [ ... ] and therefore is [are] included in the judicially recognized exception of processes of human thinking, and systems that depend for their operation on human intelligence alone.” App. Br. 40–55. Appellant argues there is no basis for finding manual or physical steps performed by a person to disqualify claimed subject matter and, here, the claims depend upon observable, physical action and rely upon the device apparatus, i.e. a machine, not human intelligence alone. Id. Appellant argues neither Alice nor identified MPEP sections3 provide sufficient basis to characterize the claims as being directed to an abstract idea. Reply Br. 8–9. In particular, Appellant argues, “assuming the Applicant’s claims were limited to human operation of the respective machines therein, it nonetheless remains incorrect to characterize the claims as directed to an abstract idea and the courts have not found otherwise.” Id. We are persuaded by Appellant’s arguments. Alice identifies a two- step framework for determining whether claimed subject matter is judicially- excepted from patent eligibility under § 101. According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept,” such as an abstract idea. Alice, 134 S.Ct. at 2355. 3 See MPEP sections 706.3A II; MPEP 2103; 2014 Interim Guidance on Patent Subject Matter Eligibility (December 2014); July 2015 Update: Subject Matter Eligibility (July 2015). Appeal 2016-002623 Application 12/697,289 5 Regarding step 1, we are persuaded by Appellant’s arguments as there is insufficient basis to find claim 5 is directed to an abstract idea. In particular, we agree with Appellant that the claimed invention is not simply “installing an indoor antenna” and instead requires a series of steps and associated devices. Moreover, the Examiner provides no persuasive evidence that the ineligible abstract idea and processes for organizing human activity set forth in Alice and the identified MPEP sections should be extended to the claims before us. In view of the above, we do not sustain the rejection of independent claim 5, independent claims 7 and 8 which recite similar limitations as claim 5 and for which the above discussion remains applicable, and independent claims 19 and 21 wherein the Examiner makes similar rejections discussed above. We also do not sustain the rejection of dependent claims 2–4, 9–18, 20, and 22 which are rejected on a similar basis and for which the above discussion regarding claim 5 remains applicable. Because our decision is dispositive of the rejection of these claims, we do not address additional arguments raised by Appellant. DECISION We reverse the Examiner’s decision rejecting claims 2–5 and 7–22 under 35 U.S.C. § 101. REVERSED