Ex Parte Ohman

Patent Trial and Appeal Board

Aug 30, 2017

11267552 (P.T.A.B. Aug. 30, 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.
11/267,552 11/04/2005 Chris M. Ohman OKC00722 9676
33900 7590 09/01/2017
Hall Estill Attorneys at Law
(MDMMY)
100 NORTH BROADWAY
SUITE 2900
OKLAHOMA CITY, OK 73102-8820
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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):
danderson@hallestill.com
okcipdocketing @ hallestill. com
US PTO @ dockettrak. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRIS M. OHMAN
Appeal 2015-003971
Application 11/267,5521
Technology Center 3600
Before, JOSEPH A. FISCHETTI, CYNTHIA L. MURPHY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 2—11 and 16—19. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellant identifies Chris M. Ohman as the real party in interest. Appeal
Br. 1.
Appeal 2015-003971
Application 11/267,552
THE INVENTION
Appellant’s claims relate to a revenue generation method for a
governmental entity. (Spec. 1).
Claim 2 reproduced below, is representative of the subject matter on
appeal.
2. A method of generating revenue for a governmental entity by steps
comprising:
identifying a stationary structure supporting a traffic route information
sign on a first side, and a second side for use in supporting a commercial
advertisement;
making provisions for inclusion of commercial advertisement on an
unused second side portion of the stationary structure, wherein said
provisions are selected from a group consisting of regulatory provisions and
statutory provisions;
executing a licensing agreement between an interested party and the
governmental entity for use of the unused second side portion of the
stationary structure for commercial advertisement, wherein the executed
licensing agreement includes an agreed upon royalty payable to the
governmental entity;
securing said commercial advertisement on the unused second side
portion of the stationary structure;
collecting the agreed upon royalty from the interested party to generate
revenue for the governmental entity, in which identifying a stationary
structure includes a step of identifying a support post supporting said traffic
route information; and
deciding whether said commercial advertisement may be applied to said
stationary structure, based on the identification of said support post
supporting said traffic route information sign.
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Reach US 7,124,526 B2 Oct. 24,2006
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Application 11/267,552
Merritt et al., Standard Handbook for Civil Engineers (McGraw-Hill 4th ed.
1995) (“Merritt”).
The following rejections are before us for review.
Claims 2—11 and 16—19 are rejected under 35 U.S.C. § 101.
Claims 2—11 and 16—19 are rejected under 35 U.S.C. 1103(a) over
Keach in view of Applicant’s admission of the prior art.
Claims 2—11 and 16—19 are rejected under 35 U.S.C. 1103(a) over
Keach in view of Merritt.
FINDINGS OF FACT
1. We adopt the Examiner’s findings as set forth on pages 2—7 of the
Answer.
2. Keach discloses
In FIG. 2, one or more billboard advertisements (202) are
positioned on the reward face (206) of the sign structure with
visual exposure to the other traffic flow. FIG. 2 is an example
of one embodiment, where the overhead traversing section of
the overhead sign is supported by two lateral support beams
(208). Overhead sign structures having two lateral support
beams are common in large freeways, where it is necessary to
post a large quantity of information.
Col. 5,11. 19-26.
3. Keach discloses at Fig. 2 placing advertising on the rear face of a
vehicle traffic highway sign.
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Application 11/267,552
The above is Fig. 2 of Keach which shows advertising on the rear face
of a vehicle traffic highway sign.
4. Keach discloses
As an additional benefit of the invention, local and state
governments who own the existing overhead highway signs
may be able to raise additional revenues for the city, county and
state by leasing the rearward portions of their signs to private
organizations who wish to use them for advertising in
accordance with the present invention.
Col. 6,11. 55-61.
ANALYSIS
35 U.S.C. § 103(a) REJECTION
We will affirm the rejection of claims 2—11 and 16—19 under
35 U.S.C. § 103(a).
The Appellant argued claims 2—11 and 16—19 as a group. (Appeal Br.
28). We select claim 2 as the representative claim for this group, and the
remaining claims standing or falling with claim 1. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015).
Appellant argues,
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Keach ‘526 taken alone or in combination with the cited
references is silent about either regulatory provisions or
statutory provisions for the inclusion of commercial
advertisement on an unused second side portion of the
stationary structure. Keach ‘526 shows, teaches and suggests
only “traffic information as part of a government regulated
traffic information system” (Keach ‘526: col. 2, lines 52-54;
col. 5, lines 13-15; col. 6, lines 9-11; col. 6, lines 34-35. Keach
‘526 further shows, teaches and suggests Compliance with
“local or applicable government authorities for billboard
advertising in a particular area, city, county, or district” but not
either regulatory provisions or statutory provisions for the
inclusion of commercial advertisement on an unused second
side portion of the stationary structure, in which the
stationary structure supports a traffic sign on a first side, And
most particularly, FIG. 5 of the Keach ‘526 prior art is void and
silent regarding the claim limitation of “making provisions for
inclusion of commercial advertisement on an unused second
side portion of the stationary structure, wherein said provisions
are selected from a group consisting of regulatory provisions
and statutory provisions.”
(Appeal Br. 26).
The Examiner however found,
Handbook discloses identifying a support post supporting said
traffic route information sign for use in deciding whether said
commercial advertisement may be applied to the stationary
structure (See section 6.2, Types of load, static load)). It would
have been obvious to one of ordinary skill in the art at the time
the invention was made to include a step of identifying a
support post supporting said traffic route information sign for
use in deciding whether said commercial advertisement may be
applied to the stationary structure within Keach for the rationale
of complying with municipal code requirements and for safety
reasons (see Handbook, paragraph preceding section 6.3 and
see Keach figure 5 for identification). . . .
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Application 11/267,552
Keach discloses in figure 5 the making of the provisions
(including an advertisement) on an unused side in figure 5. In
addition, the term licensing agreement is within the scope of
leasing agreement as they are performing the same function, as
well as the term royalty within the scope of the leasing
agreement to raise revenues for the government. Further, based
on Applicant’s own admission, it would have been obvious to
one of ordinary skill in the art at the time the invention was
made to include in which said sizing a support post and truss
combination includes a step of identifying said support post and
truss combination and deciding whether said commercial
advertisement sign maybe attached to said second side of said
truss based on said identification for the rationale of complying
with municipal code requirements and for safety reasons.
Applicant’s own admission in the arguments filed 11/24/2008
(page 9, paragraph 4 to page 10, paragraph 1) as the limitation
is directed to “a skilled artisan understands that support posts,
trusses exposed to the elements perform an inherent function of
supporting both static and dynamic loads. Second, a skilled
artisan understands how to calculate both the static and
dynamic load carrying capabilities of support posts and trusses.
By disclosing in a patent application a device that inherently
performs a function, operates according to a theory, or has an
advantage, a patent application necessarily discloses that
function, theory or advantage even though it says nothing
explicit concerning it.”
(Answer 5—6).
We disagree with Appellant because Keach discloses that local and
state governments own the existing overhead highway sign structures and
lease the rearward portions thereof to private organizations who wish to use
them for advertising. (FF. 4) We find that one having ordinary skill in the
art would have known to make provisions with the local/state governments
who own the sign structures in accordance with regulatory and statutory
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provisions if the he/she wished to use the unused second side portion of the
stationary structure for advertising.
Concerning the limitation of, “identifying a stationary structure
supporting a traffic route information sign on a first side, and a second side
for use in supporting a commercial advertisement”, we agree with the
Examiner and adopt as our own the Examiner’s finding that,
It would have been obvious to one of ordinary skill in the art at
the time the invention was made to include a step of identifying
a support post supporting said traffic route information sign for
use in deciding whether said commercial advertisement may be
applied to the stationary structure within Keach for the rationale
of complying with municipal code requirements and for safety
reasons (see Handbook, paragraph preceding section 6.3 and
see Keach figure 5 for identification).
(Answer 4—5). This is because we find that one having ordinary skill in the
art would have known to design a supporting structure which is capable of
supporting the double load associated with the two sided signage of Keach
because such a load calculation is basic to any structural design.2 (FF. 4).
Concerning the claimed identified items (roadway, forward face
rearward face) argued on page 6 of the Brief, these items are readily
identifiable in the Keach sign structure of Fig. 2. (FF. 3).
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 2—11 and 16—19 under
35 U.S.C. § 101.
2 Our finding here makes the Examiner’s reliance on Merritt and AAPA
cumulative. (Final Act. 14-16, 33-35).
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Claim 2 is representative of the independent claims before us on appeal,
which contain similar limitations, and is a method claim of steps, viz.
identifying a stationary structure supporting a traffic route information
sign on a first side, and a second side for use in supporting a commercial
advertisement making provisions for inclusion of commercial advertisement
on an unused second side portion of the stationary structure, wherein said
provisions are selected from a group consisting of regulatory provisions and
statutory provisions;
executing a licensing agreement between an interested party and the
governmental entity for use of the unused second side portion of the
stationary structure for commercial advertisement, wherein the executed
licensing agreement includes an agreed upon royalty payable to the
governmental entity;
securing said commercial advertisement on the unused second side
portion of the stationary structure;
collecting the agreed upon royalty from the interested party to generate
revenue for the governmental entity, in which identifying a stationary
structure includes a step of identifying a support post supporting said traffic
route information; and
deciding whether said commercial advertisement may be applied to said
stationary structure, based on the identification of said support post
supporting said traffic route information sign.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us?” To answer that question,
. . . consider the elements of each claim both individually and
“as an ordered combination” to determine whether the
additional elements “transform the nature of the claim” into a
patent-eligible application. [The Court] described step two of
this analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
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that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 2 recites that it is for generating revenue for a
governmental entity. The steps in claim 2 result in collecting the agreed
upon royalty from an interested party to generate revenue for the
governmental entity. The Specification states the invention relates “to a
commercialization of unused portions of govemmentally controlled
stationary structures, such as a highway sign support structures, for use in
supporting commercial advertisements.” (Specification 1:10-13). The
Specification at page 1 lines 15—19 recites:
Opportunities for governmental agencies to generate revenues,
other than through regulatory, processing, and licensing fees or
through taxation are limited. Often, the ability to increase fees
or taxes relies on a statutory mandate and may necessitate voter
approval, either of which may prove to be a daunting task.
Thus, all this evidence shows that claim 2 is directed to commercialization
of unused portions of govemmentally controlled stationary stmctures to
generate revenues for governmental agencies. It follows from prior Supreme
Court cases, and Gottschalk v. Benson, 409 U.S. 63 (1972) in particular, that
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the claims at issue here are directed to an abstract idea. Commercialization
of unused portions of govemmentally controlled stationary structures to
generate revenues for governmental agencies, is a fundamental economic
practice and thus is an abstract idea preempting all implementations and
uses. The patent-ineligible end of the spectrum includes fundamental
economic practices. See Alice, 134 S. Ct. at 2357. Thus, commercialization
of unused portions of govemmentally controlled stationary stmctures to
generate revenues for governmental agencies is an “abstract idea” beyond
the scope of § 101. See Alice, 134 S. Ct. at 2355—2357.
As in Alice, we need not labor to delimit the precise contours of the
“abstract ideas” category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
performing a mathematical algorithm in Gottschalk and the concept of
commercialization of unused portions of govemmentally controlled
stationary stmctures to generate revenues for governmental agencies. Both
are squarely within the realm of “abstract ideas” as the Court has used that
term. See Alice, 134 S. Ct. at 2357. That the claims do not preempt all
forms of the abstraction or may be limited to the abstract idea in the highway
transportation sign setting, does not make them any less abstract. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015).
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
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computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement^]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 134 S. Ct. at 2358 (alterations in original) (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Alice, 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data and compute a result from a database amounts to
electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. In short, each step
does no more than require a generic computer to perform generic computer
functions.
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant’s method claims
simply recite the concept of commercialization of unused portions of
govemmentally controlled stationary structures to generate revenues for
governmental agencies, as performed by a generic computer. The claims do
not, for example, purport to improve the functioning of the computer itself.
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Nor do they effect an improvement in any other technology or technical
field. Instead, the claims at issue amount to nothing significantly more than
instructions to commercialize unused portions of govemmentally controlled
stationary structures to generate revenues for governmental agencies. Under
our precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101 “in
ways that make patent eligibility “depend simply on the
draftsman’s art.”
Alice, 134 S. Ct. at 2360 (alterations in original).
Appellant’s arguments based on the machine or transformation test
(Appeal Br. 13—21) are insufficient to rebut the findings made above based
on the United Supreme Court Decision in Alice, 134 S. Ct. 2347. The
Supreme Court clarified in Bilski v. Kappos, 130 S. Ct. 3218 (2010) that the
machine-or-transformation test “is not the sole test for deciding whether an
invention is a patent-eligible ‘process’ [under § 101].” Id. at 3227.
Appellant’s arguments to the Alice two part test are insufficient to rebut the
findings made by the Examiner and those made supra in that they merely
make general assertions that the claims are not directed to elements of each
test part. (Appeal Br. 22-23).
Likewise unpersuasive is Appellant’s argument that the claims are
directed to improvements in the “technology employed in the field of
advertisement.” (Reply Br. 3). This is because we find that the claims as a
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whole do not “focus on a specific means or method that improves the
relevant technology” but rather are “directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery.”
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed.
Cir. 2016). Here the technology is sign supports, and we find nothing in the
claims or Specification which improves the structural engineering of the sign
support beyond merely sizing a standard support frame to hold signage on
two sides rather than one.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 2—11 and
16-19 under 35 U.S.C. § 103.
We conclude the Examiner did not err in rejecting claims 2—11 and
16-19 under 35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 2—11 and 16—19 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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