Ex Parte Fellon

Board of Patent Appeals and Interferences

Dec 28, 2011

11160847 (B.P.A.I. Dec. 28, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/160,847 07/12/2005 Dave Fellon 1241.1102101 1846
28075 7590 12/29/2011
SEAGER, TUFTE & WICKHEM, LLC
1221 NICOLLET AVENUE
SUITE 800
MINNEAPOLIS, MN 55403-2420
EXAMINER
AHMED, AFFAF
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
12/29/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DAVE FELLON
____________

Appeal 2010-001692
Application 11/160,847
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
ANTON W. FETTING, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-001692
Application 11/160,847
2
STATEMENT OF THE CASE
Dave Fellon (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 1-27. We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE and enter a NEW GROUND of rejection under 35
U.S.C. § 103(a) pursuant to our authority under 37 C.F.R. § 41.50(b).1
THE INVENTION
The invention relates “to systems and methods for advertising, and
more particularly, to systems and methods for using rolling rail stock, such
as one or more rail cars, as an advertising platform in high visibility
locations.” Spec. [Para 1]. Claim 1, reproduced below, is illustrative:
1. A method for generating revenue, comprising:
providing an advertisement on a rail road freight car;
releasing the freight car onto a rail road network, the
freight car having a free runner status; and
accepting a fee based on one or more of a length of time
the advertisement is on the freight car, a route traveled by the
freight car, and the length of time the freight car is in a
particular location.
EVIDENCE
The Examiner relies upon the following as evidence of
unpatentability:
Key
Berryman
Hendrickson
US 5,657,566
US 2005/0150147 A1
US 2005/0205719 A1
Aug. 19, 1997
Jul. 14, 2005
Sep. 22, 2005

1 We refer to the Appeal Brief (“App. Br.,” filed Jun. 5, 2009), Reply Brief
(“Reply Br.,” filed Oct. 28, 2009), and Answer (“Ans.,” mailed Aug. 28,
2009).
Appeal 2010-001692
Application 11/160,847
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REJECTIONS
The following rejections are before us for review:
1. Claims 1-27 are rejected under 35 U.S.C. §101 as directed to non-
statutory subject matter.
2. Claims 1 and 7 are rejected under 35 U.S.C. §103(a) as unpatentable
over Berryman and Key.
3. Claims 2-6 are rejected under 35 U.S.C. §103(a) as unpatentable over
Berryman, Key, and Hendrickson.
4. Claims 8-13, 17, 18, and 21-24 are rejected under 35 U.S.C. §103(a)
as unpatentable over Berryman and Key.
5. Claims 14-16, 19, and 20 are rejected under 35 U.S.C. §103(a) as
unpatentable over Berryman, Key, and Hendrickson.
6. Claims 25-27 are rejected under 35 U.S.C. §103(a) as unpatentable
over Berryman and Key.

ISSUES
Did the Examiner establish that the process recited in claims 1-27 fails
to satisfy the machine-or-transformation test as a factor weighing against
their patent eligibility under 35 U.S.C. § 101?
Did the Examiner establish a prima facie case of obviousness for the
claimed subject matter?

ANALYSIS
Rejection of claims 1-27 under 35 U.S.C. § 101 as directed to non-statutory
subject matter
We reverse this rejection. Although the law on patent-eligibility for
process claims under 35 U.S.C. § 101 has undergone significant clarification
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since the mailing of the Answer (2009), it remains the case that failing to
satisfy the machine-or-transformation test is a factor weighing against the
patent eligibility of a process claim. See Interim Guidance for Determining
Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos, 75
Fed. Reg. 43,922, 43,926 (July 27, 2010).
The Examiner does not fully explain why the process recited in the
claims fails to pass the machine-or-transformation test. Ans. 2-5. The
Examiner concludes that “Appellant’s method steps are not tied to a
particular machine and do not perform a transformation,” but does not
provide any analysis to support this finding. Ans. 3, 5.
Claims 1, 7, 8, 17, and 25 are independent and involve moving rail
cars. The Examiner does not explain why rail cars fail to qualify as
particular machines to which the process would be tied. Because the
Examiner does not address these and other claim limitations in reaching the
conclusion that the processes recited fail to satisfy the machine-or-
transformation test, we find that the Examiner has not established a prima
facie case of patent-ineligibility under 35 U.S.C. § 101. Thus we reverse
this rejection.
Rejection of claims 1 and 7 under 35 U.S.C. § 103(a) as unpatentable over
Berryman and, Key
We reverse this rejection. The Examiner’s position that various claim
limitations are to be given no patentable weight is in error.
Claim 1 is drawn to a method comprising the step of “releasing the
freight car onto a rail road network, the freight car having a free runner
status.” The Examiner does not afford this step patentable weight because
“whether the vehicles hav[e] a free runner status is based on contract terms
(agreement). An agreement is a non-functional descriptive materials and is
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Application 11/160,847
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not given patentable weight, because it does not alter how the process steps
are performed to achieve the utility of the invention (MPEP § 2106.01).”
Ans. 7. Notwithstanding the speculative nature of the view that the “free
runner status” is the product of an agreement, “free runner status” is not
merely descriptive material with no functional effect on any structure set
forth in the claims. The claim terms “free runner status” is attached not only
to the freight car but to the nature of the travel of the freight car upon release
onto the rail road network (which are elements of the claim). As opposed to
information like particular words in a book or the lyrics in a song,
designating a status other than “free runner status” to the freight car would
change the very operation of the claimed invention. Accordingly, we
disagree with the Examiner’s conclusion that the claim limitation “free
runner status” has no patentable significance. In the context of the claim as
a whole, this limitation impacts the claim’s scope. The limitation should be
given patentable weight when evaluating the prior art in making an
obviousness determination.
Claim 7 is drawn to method comprising the step of “releasing the
freight car for movement between two or more locations along a rail road
network, wherein an actual freight car path is determined prior to releasing
the freight car; wherein the step of determining the fee is dependent on the
actual freight car path.” The Examiner does not afford this step patentable
weight because:
[t]he fact that the element (releasing the car onto the
transportation network) is capable of performing specific
function does not mean it is actually performing the function as
recited in the claim (movement between two or more locations
along a rail road network). The functions recited in the claim
are not positively claimed limitations but only require[] the
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elements to be able to perform the functions. A recitation of the
intended use of the claimed invention must result in a structural
difference between the claimed invention and the prior art in
order to patentably distinguish the claimed invention from the
prior art. If the prior art structure is capable of performing the
intended use, then it meets the claim.
Ans. 8-9. We disagree.
Claim 7 requires “releasing the freight car for movement between two
or more locations along a rail road network.” It is true that the clause “for
movement between two or more locations along a rail road network” is a
functional limitation. Nevertheless, the freight car must be released and,
furthermore, the release must be such that it permits the freight car to move
between two or more locations along a rail road network. A freight car
capable of being released is insufficient to meet the claim limitations. The
fact that freight cars have wheels and are capable of release does not mean
the claimed act of “releasing the freight car for movement between two or
more locations along a rail road network” has been performed. Accordingly,
we disagree with the Examiner’s conclusion that the limitation of “releasing
the freight car for movement between two or more locations along a rail road
network” has no patentable significance. In the context of the claim as a
whole, this limitation impacts the claim’s scope. The limitation should be
given patentable weight when evaluating the prior art in making an
obviousness determination. As the Examiner has not established a prima
facie case of obviousness for claims 1 and 7, we reverse this rejection.

Rejection of claims 2-6 under 35 U.S.C. §103(a) as unpatentable over
Berryman, Key, and Hendrickson
Claims 2-6 depend from claim 1. For the reasons discussed supra in
reversing the rejection of claim 1, we reverse this rejection.
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Rejection of claims 8-13, 17, 18, and 21-24 under 35 U.S.C. §103(a) as
unpatentable over Berryman and Key
The rejection of independent claim 8 suffers for the same defects
discussed above with respect to the rejection of claim 1. In the Final
Rejection, the Examiner appears to treat the claim steps of:
forming an agreement between at least first and second
rail road entities, each having at least one rail yard connected to
a common rail road network, for the first rail road entity to
perform quality checks on advertisements positioned on those
rail cars that are owned or leased by the second rail road entities
that are part of the agreement when the rail cars are in the rail
yard of the first rail road entity;
each rail road entity accepting a fee for placement of
advertisements on one or more of it's rail cars
as a matter of an agreement and then discounts these steps because “[a]n
agreement is a non-functional descriptive material and is not given
patentable weight, because it does not alter how the process steps are
performed.” Final Rej. 4. We disagree with this reading of claim 8. These
steps are actions and thus are claim limitations. These limitations should be
given patentable weight when evaluating the prior art in making an
obviousness determination.
The Examiner’s position regarding independent claim 17 is not clear.
Claim 17 calls for “releas[ing] the rail cars that have a placed advertisement
as free runners onto a rail road network.” The Examiner does not expressly
address the limitation “as free runner.” Presumably, the Examiner means to
take the same position as was taken with respect to the claim 1 limitation
“free runner status;” that is, this limitation is a product of an agreement
which is a non-functional descriptive material and thus patentably
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inconsequential. For the reasons discussed with respect to the rejection of
claim 1 supra, we disagree and reverse the rejection of claim 17.
Claims 9-13 depend from claim 8. For the reasons discussed supra in
reversing the rejection of claim 8, we reverse the rejection of these claims.
Claims 18 and 21-24 depend from claim 17. For the reasons
discussed supra in reversing the rejection of claim 17, we reverse the
rejection of these claims.
Rejection of claims 14-16, 19, and 20 under 35 U.S.C. §103(a) as
unpatentable over Berryman, Key, and Hendrickson
Claims 14-16 depend from claim 8. For the reasons discussed supra
in reversing the rejection of claim 8, we reverse the rejection of these claims.
Claims 19 and 20 depend from claim 17. For the reasons discussed
supra in reversing the rejection of claim 17, we reverse the rejection of these
claims.
Rejection of claims 25-27 under 35 U.S.C. §103(a) as unpatentable over
Berryman and Key
Claim 25 is drawn to a method comprising “moving the one or more
rail cars along a track from a first location to a second location and then back
to the first location without delivering any goods to the second location.”
The Examiner states:
Whether the transportation vehicle deliver[s] goods or not it are
not functionally involved in the steps recited nor do they alter
the recited structural elements. The recited method steps would
be performed the same regardless of the specific data. Further,
the structural elements remain the same regardless of the
specific data.
Final Rej. 4. We disagree with the Examiner’s conclusion that this claim
limitation has no patentable significance. In the context of the claim as a
whole, the phrase “without delivering any goods to the second location” is a
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limitation on the act of moving that the claim requires. It has nothing to do
with data. The limitation should be given patentable weight when
evaluating the prior art in making an obviousness determination.
Claims 26 and 27 depend from claim 25. For the reasons discussed
supra in reversing the rejection of claim 25, we reverse the rejection of these
claims.
NEW GROUND
We enter a new ground of rejection of claims 1-30 is under 35 U.S.C.
§ 103(a) pursuant to our authority under 37 C.F.R. § 41.50(b) as
unpatentable over the state of the art at the time of the invention (2002). We
make the following findings of fact regarding the construction of claim 1.
1. Claim 1 comprises three steps.
2. Step 1 calls for providing an advertisement on a rail road freight
car.
3. Step 2 calls for releasing the freight car onto a rail road network in
a free runner status.
4. Step 3 calls for accepting a fee based on (a) a length of time the
advertisement is on the freight car, (b) a route traveled by the
freight car, and/or (c) the length of time the freight car is in a
particular location.
5. Step 3 calls for accepting a fee based solely on the length of time
the freight car is in a particular location.
We make the following findings of fact as to the state of the art at the
time of the invention, and take Official Notice of each.
6. Rail road freight cars were known in the art.
7. Advertisements were known in the art.
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8. Advertisements affixed on rail road freight cars were known in the
art.
9. Releasing freight cars onto a rail road network in a free runner
status was known in the art. See App. Br. 13.
10. Accepting a fee based on the length of time a vehicle is in a
particular location was known in the art, i.e., parking meters.
Independent claim 1 is representative. We find no element in the
other claims that was not known in the art at the time of the invention.
Giving claim 1 the broadest reasonable construction in light of the
Specification as it would be interpreted by one of ordinary skill in the art, the
method simply calls providing an advertisement on a rail road freight car,
releasing the freight car onto a rail road network in a free runner status, and
accepting a fee based solely on the length of time the freight car is in a
particular location via a parking meter. See FF 1-10.
In our view, the claimed process as reasonably broadly construed is
merely a combination of known elements in the art (see FF 6-10), which has
not been shown to yield anything other than what one would expect from
such an arrangement. “[W]hen a patent ‘simply arranges old elements with
each performing the same function it had been known to perform’ and yields
no more than one would expect from such an arrangement, the combination
is obvious.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007)
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
CONCLUSIONS
The rejection of claims 1-27 under 35 U.S.C. §101 is reversed.
The rejections of claims 1 and 7 under 35 U.S.C. §103(a) as
unpatentable over Berryman and Key; claims 2-6 under 35 U.S.C. §103(a)
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as unpatentable over Berryman, Key, and Hendrickson; claims 8-13, 17, 18,
and 21-24 under 35 U.S.C. §103(a) as unpatentable over Berryman and Key;
claims 14-16, 19, and 20 under 35 U.S.C. §103(a) as unpatentable over
Berryman, Key, and Hendrickson; and claims 25-27 under 35 U.S.C.
§103(a) as unpatentable over Berryman and Key, are reversed.
We enter a new ground of rejection of claims 1-27 under 35 U.S.C.
§ 103(a) pursuant to our authority under 37 C.F.R. § 41.50(b) as
unpatentable over the state of the art at the time of the invention.
DECISION
The decision of the Examiner to reject claims 1-27 is reversed.
We enter a new ground of rejection of claims 1-30 is under 35 U.S.C.
§ 103(a).
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record . . . .

REVERSED; 37 C.F.R. § 41.50(b)
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