Ex Parte Turner et al

Patent Trial and Appeal Board

Feb 26, 2019

12622432 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/622,432 11/20/2009 Charles C. Turner
86548 7590 02/28/2019
Garlick & Markison (IH)
106 E. 6th Street, Suite 900
Austin, TX 78701
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.
206-0AG-06-2009 4322
EXAMINER
DAGNEW, SABA
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
MMurdock@TEXASPATENTS.COM
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES C. TURNER and ALAN L. CARLSON
Appeal2017-005811
Application 12/622,432 1
Technology Center 3600
Before JOHN A. JEFFERY, CATHERINE SHIANG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-20, which are all the claims pending in this application.
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is iHeartMedia
Management Services, Inc. App. Br. 3.
Appeal2017-005811
Application 12/622,432
STATEMENT OF THE CASE
Introduction
Appellants' application relates to managing a billboard having
powered features, such as lighting. Spec. ,r 2. Claim 1 illustrates the
appealed subject matter and reads as follows:
1. A method of managing signage by a workstation,
compnsmg:
storing data defining parameters for at least one condition
of a plurality of conditions related to operation of a plurality of
signage locations, the data including a first booking status code
in a database providing an indication related to customer
reservation of a powered feature of a plurality of powered
features of the signage at a signage location of the plurality of
signage locations;
establishing at least one approval condition, related to the
powered feature, including a requirement that the first booking
status code match one of a plurality of predetermined booking
status codes;
monitoring compliance with the at least one approval
condition; and
when non-compliance with the at least one approval
condition occurs:
generating a control signal in response to the non-
compliance with the at least one approval condition of a
targeted signage at a target signage location of the plurality
of signage locations;
transmitting, via the workstation, the control signal
to the targeted signage;
disabling the powered feature of the targeted
signage responsive to the transmitted control signal; and
receiving via the workstation, responsive to the
transmitted control signal, a confirmation signal indicating
the disabling of the powered feature of the targeted
s1gnage.
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Appeal2017-005811
Application 12/622,432
The Examiner's Rejections
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2-4.
Claims 1-5, 8, and 18-20 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kao et al. (US 2006/0136625 Al; June 22, 2006)
and Yuan (US 2008/0094246 Al; Apr. 24, 2008). Final Act. 5-13.
Claims 6, 7, and 19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kao and Hanwright et al. (US 2010/0066484 Al; Mar. 18,
2010). Final Act. 13-15.
Claims 9-17 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Kao, Yuan, and Hanwright. Final Act. 15-20.
ANALYSIS
Patent-Ineligible Subject Matter
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
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Application 12/622,432
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
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Application 12/622,432
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of§
101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance ("Memorandum"). Under that guidance, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions 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)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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Application 12/622,432
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(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.
The Examiner concludes claim 1 is directed to the abstract idea of
enabling or disabling a powered feature of signage, such as lighting, in
response to a payment due date or the expiration of the contract. Ans. 2.
Appellants argue modifying physical power settings for a remote
powered device is not a simple abstract idea and extends beyond mere
thoughts, plans, or suggestions about what to do. App. Br. 13. According to
Appellants, the claims relate to specific technical functions that are
performed by specific devices, not general purpose computers.
Appellants have persuaded us of Examiner error. Claim 1 recites, in
relevant part, "generating a control signal in response to the non-compliance
with the at least one approval condition of a targeted signage," "transmitting,
via the workstation, the control signal to the targeted signage," "disabling
the powered feature of the targeted signage responsive to the transmitted
control signal," and "receiving via the workstation, responsive to the
transmitted control signal, a confirmation signal indicating the disabling of
the powered feature of the targeted signage."
Claim 1 is directed to enabling or disabling a powered feature of
signage in response to a changed condition related to the feature. Even if the
claim is directed to a method of organizing human activity, such as business
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relations or agreements in the form of contracts, and therefore directed to an
abstract idea, claim 1 integrates such an idea into a practical application. In
particular, claim 1 recites steps that allow for the automatic management of
powered features of a billboard without user interaction. Our reviewing
court has held that claims that recite rules allowing automation of animation
tasks that could only be performed manually were not directed to an abstract
idea. See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1313-14 (Fed. Cir. 2016); see also MPEP 2106.015(a). Like McRO, the
claims here improve an existing technology and are, therefore, not directed
to an abstract idea.
For these reasons, we do not sustain the Examiner's rejection of
independent claim 1 as directed to patent-ineligible subject matter. We also
do not sustain the rejection of independent claims 9 and 18, which recite
commensurate subject matter, or claims 2-8, 10-17, 19, and 20, dependent
therefrom.
Obviousness
Appellants argue the Examiner erred in rejecting claim 1 as
unpatentable over Kao and Yuan because Kao is directed to rectifying
billing errors caused by equipment failure, not controlling remote electronic
signage. App. Br. 17-18. Appellants argue it would not have been obvious
to modify Kao' s teachings to apply to a remote signage environment because
Kao's system is a self-service kiosk. Id. at 18.
Appellants have not persuaded us of Examiner error. The Examiner
finds, and we agree, Kao teaches monitoring and controlling electrically
powered devices, such as advertising displays. Final Act. 6 ( citing Kao
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Application 12/622,432
,r 39). We agree with the Examiner that such a teaching at least suggests
managing "signage" as claimed.
Appellants' argument that Kao's system is a self-service kiosk (see
App. Br. 18 (citing Kao ,r 40)) is also unpersuasive. Kao teaches system 30
is configured to operate as a self-service facility. System 30 refers to the
workstation that manages and controls electrically powered devices, not the
electrically powered devices themselves. See Kao ,r,r 25-27. Thus, Kao
teaches that a user may operate system 30 to manage electrically powered
devices, such as advertising displays, not the remote physical signage as
suggested by Appellants. See App. Br. 18.
Appellants also argue the Examiner erred because Yuan teaches a
state indicator, not a "booking status code," as claimed. App. Br. 19-20.
Appellants argue Yuan's state indicator merely indicates an on/off state, not
the claimed booking status code. Id. ( citing Spec. 10). Appellants argue
Yuan teaches comparing real-time data to tum on schedule data, which is
different than matching a first booking status code to one of a plurality of
booking status codes, as claimed. Id. at 20.
Appellants have not persuaded us of Examiner error. The claim term
"booking status code" is not defined in the Specification. We agree with the
Examiner that the broadest reasonable interpretation of the term "booking
status code" includes a code indicating whether a service is active ( on) or
inactive ( off).
Claim 1 also recites matching a first booking status code to one of a
plurality of predetermined booking status codes. We agree with the
Examiner that Kao teaches "a requirement that the first booking status code
match one of a plurality of predetermined booking status codes" by teaching
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Application 12/622,432
matching the state indicator (booking status code) to either "on" or "off'
( one of a plurality of predetermined booking status codes). Appellants'
arguments to the contrary are conclusory (see App. Br. 19-20) and do not
persuasively show error in the Examiner's reasoning.
For these reasons, we sustain the Examiner's rejection of claim 1 as
unpatentable over Kao and Yuan. We also sustain the Examiner's
obviousness rejection of claim 9, which Appellants argue is in error for
substantially the same reasons as claim 1. See App. Br. 22. We also sustain
the Examiner's obviousness rejection of independent claim 18, and
dependent claims 2-8, 10-17, 19, and 20, for which Appellants offer no
separate argument. See App. Br. 20-22.
DECISION
Because we have sustained at least one ground of rejection with
respect to each claim on appeal, we affirm the decision of the Examiner
rejecting claims 1-20. See 37 C.F.R. § 4I.50(a)(l).
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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