Ex Parte Weisbach et al

Board of Patent Appeals and Interferences

Feb 29, 2012

10745780 (B.P.A.I. Feb. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LOU WEISBACH, SCOTT A. HEIMAN,
JACK D. SOMMER and RICHARD J. BOXER
____________

Appeal 2010-011353
Application 10/745,780
Technology Center 3600
____________

Before, ANTON W. FETTING, JOSEPH A. FISCHETTI and
MICHAEL W. KIM, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 1-28. We have jurisdiction under 35 U.S.C. § 6(b)
(2002).

SUMMARY OF DECISION
We AFFIRM and enter a new ground under 37 C.F.R. § 41.50(b).

THE INVENTION
Appellants claim a method for financing the construction or
renovation of sports stadiums for professional or amateur sports or
entertainment centers or the like. (Specification 1: 6-8).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method of financing the construction or renovation of a
sports stadium for professional or amateur sports or an
entertainment center or the like, said method comprising:

selling an occupancy interest in each of a plurality of seats in
the sports stadium or entertainment center to a plurality of
seat buyers in exchange for the agreement of each seat buyer
to make a plurality of payments for a predetermined number
of years instead of paying for a season ticket for each seat;

obtaining loan funds of a principle amount from a lender
which is to be repaid with interest by said payments from
said seat buyers to said lender; and

using said loan funds of said principle amount for the
construction or renovation of the sports stadium or
entertainment center.
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THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
Cuervo US 5,025,138 Jun. 18, 1991
Harmon US 2004/0039696 A1 Feb. 26, 2004
Salter US 2004/0044616 A1 Mar. 4, 2004

Fitch IBCA ("Changing Game of Sports Finance. Economics of
Professional Sports and Trends in Sports Finance," Fitch IBCA, (April
1999).)

Business Wire ("Bear Stearns Sells First-Ever Asset-Backed
Financing for Sports Facility," Business Wire, (Jul. 1998), p. 1.)

Spielman (Spielman, Fran "Bears Put Price on Best Seats; $10,000
Buys Rights to Top Perch in New Soldier Field," Chicago Sun-Times
(Feb. 13, 2002), p. 8.)

The following rejections are before us for review.
1. The Examiner rejected claims 1-28 under 35 U.S.C. § 101.
2. The Examiner rejected claims 1-5, 8, 10-12 and 28 under 35 U.S.C.
§ 103(a) over Fitch, Business Wire and Salter.
3. The Examiner rejected claims 6, 7, 13-16 and 19-21 under 35
U.S.C. § 103(a) over Fitch, Business Wire, Salter, and Harmon.
4. The Examiner rejected claims 9 and 22 under 35 U.S.C. § 103(a)
over Fitch, Business Wire, Salter and Spielman.
5. The Examiner rejected claims 17 and 18 under 35 U.S.C. § 103(a)
over Fitch, Business Wire, Salter and Cuervo.
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6. The Examiner rejected claims 23-26 under 35 U.S.C. § 103(a) over
Fitch, Business Wire, Salter, Spielman and Harmon.
7. The Examiner rejected claim 27 under 35 U.S.C. § 103(a) over
Fitch, Business Wire, Salter, and Harmon.
ISSUES
The issue of obviousness turns on whether an occupancy interest
involved with a suite is not based on paying for a season ticket for a seat, but
rather is based on allowing a given number of people to occupy the space
during periods where the stadium is presenting an event, which meets the
claim requirement of not paying for a season ticket for each seat?
The issue under 35 U.S.C. § 101 involves whether the claims involve
patent-eligible subject matter.

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
1. Each of Fitch and Business Wire discloses using income streams
from luxury suite markets to help finance sports facilities. (Fitch, p. 5;
Business Wire, p. 1 (full text)).
2. It is our understanding that holding an occupancy interest in a
luxury suite in a sports complex entitles the holder of that interest to have a
certain number of people occupy the space in the suite for a given event.
3. The Examiner found with respect to the combination of Fitch and
Business Wire that:
One of ordinary skill in the art would have been motivated to
incorporate this feature for the purpose of obtaining a loan to
finance the construction or renovation of a stadium or arena
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using revenues from seat leases. The expected revenue from the
leases could be used to secure a loan and make loan payments.

(Answer 5-6).
ANALYSIS
We affirm the Examiner’s rejection of claims 1-28 made under both
35 U.S.C. § 101 and 35 U.S.C. § 103(a) and enter a new grounds under 35
U.S.C. 112, Second Paragraph.

New Grounds of Rejection under
35 U.S.C. 112, Second Paragraph.

Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
ground of rejection under 35 U.S.C. 112, Second Paragraph.
Each of the independent claims require “selling an occupancy interest
in each of a plurality of seats… in exchange for payments …instead of
paying for a season ticket for each seat.” (Answer 5). Appellants attempt to
exclude ticket sales for a PSL type leases in a claim structure, but this
limitation is indefinite under 35 U.S.C. 112, Second Paragraph because the
term “occupancy interest”, by definition includes a lease.
Accordingly we reject claims 1-28 under 35 U.S.C. 112, Second
Paragraph.
Rejection under 35 U.S.C. § 101
The Examiner found that claims 1-28 are patent ineligible because
“they may be performed by the human mind”. (Answer 4).
We agree with the Examiner that these claims preempt an abstraction
and hence are barred under 35 U.S.C. § 35 U.S.C. § 101.
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The Supreme Court has held that the “machine-or-transformation may
well provide a sufficient basis for evaluating processes similar to those in the
Industrial Age—for example, inventions grounded in a physical or other
tangible form… [but,] it may not make sense to require courts to confine
themselves to asking the questions posed by the machine-or-transformation
test”. Bilski v. Kappos, 130 S.Ct. 3218, 3227-28 (June 2010). The Court
maintained that the test can be an “important clue” or “an investigative tool”,
but also emphasized that claims that explained the basic concept of an
activity (hedging) would allow the Appellant to pre-empt the use of this
approach in all fields, and would effectively grant a monopoly over an
abstract idea. Thus, abstract ideas are not patent eligible. Id. at 3225, 3231.
It therefore 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.
43922, 43926 (notice July 27, 2010).
Appellants argue that “[t]he present application transforms a rental of
a real venue seat for a game or a season into an ownership right in the real
venue seat for the life of the venue.” (Appeal Br. 10-11).
We disagree with Appellants because at the core of the right to occupy a
seat in a stadium is an abstraction, namely, the concept of ownership.
“Purported transformations or manipulations simply of public or private
legal obligations or relationships, business risks, or other such abstractions
cannot meet the test because they are not physical objects or substances, and
they are not representative of physical objects or substances.” In re Bilski,
545 F.3d 943, 963 (Fed. Cir. 2008) (en banc).
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Rejection under 35 U.S.C. § 103(a)
Initially, we note that the claims stand rejected under 35 U.S.C. 112,
Second Paragraph because of language which we find indefinite as set forth
above. But, for purposes of our analysis, we will assume the claim recites
language which properly qualifies the selling of an occupancy interest in
each of a plurality of seats in order for us to conduct our analysis. (Appeal
Br. 13).
Accordingly, we note that Appellants argue independent claims 1 and
28 together as a group. Correspondingly, we select representative claim 1 to
decide the appeal of these claims. Claim 28, and the involved dependent
claims, standing or falling with claim 1.
Appellants argue that “…one ordinarily skilled in the art of financing
the construction or renovation of a sports arena would not be compelled to
combine Fitch and Business Wire as asserted by the Examiner.” (Appeal Br.
13).
We disagree with Appellants because each of Fitch and Business Wire
discloses using income streams from luxury suite markets (Fitch, p. 5;
Business Wire p. 1 (full text) to help finance sports facilities, and thus use a
similar resolution to solve a similar problem.
Concerning the claim limitation of selling an occupancy interest in
each of a plurality of seats in the sports stadium or entertainment center…
instead of paying for a season ticket for each seat, it is our understanding
that holding an occupancy interest in a luxury suite in a sports complex
entitles the holder of that interest to have a certain number of people occupy
the space in the suite for a given event. (FF 2). As such, the occupancy
interest involved with a suite is not based on paying for a season ticket for a
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seat, but rather is based on allowing a given number of people to occupy the
space during periods where the stadium is presenting an event, which we
find meets the claim requirement of not paying for a season ticket for each
seat.
Appellants further argue that “[t]he Examiner has not articulated how
the combination of the teaching of Fitch and the teaching of Business Wire
can be combined.” (Appeal Br. 14).
We disagree with Appellants because we find that the Examiner set
forth a reasonable basis as to why a person with ordinary skill in the art
would combine Fitch with Business Wire, namely to secure expected
revenue to secure loan and make loan payments. (Answer 5-6)
Likewise we find unpersuasive Appellants’ argument that “[t]here is
nothing in Fitch that would suggest that a modification to Fitch, as suggested
by the Examiner, to incorporate the asset-backed securities of Business Wire
would be successful.” (Appeal Br. 13). We find that both Fitch and
Business Wire contemplate using luxury suite revenues streams to securitize
project financing and hence provide explicit teachings. (FF 1).
Appellants submit that Salter does not teach or even mention seat
buying. (Appeal Br. 14).
That argument is not well taken because the Appellants are attacking
the reference individually when the rejection is based on a combination of
references, and both Fitch and Business Wire contemplate using luxury suite
revenues streams to secure project financing. (FF 1). See In re Keller, 642
F.2d 413, 426 (CCPA 1981); In re Young, 403 F.2d 754, 757-58 (CCPA
1968).

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Appellants argue that Harmon, “as in Fitch, teaches away from that
which is disclosed and claimed in the present application since season tickets
are required or can be purchased by the licensee of the PSL.” (Appeal Br.
22).
We disagree with Appellants because we find that Harmon is cited by
the Examiner only to show how post realized income may be managed by a
stadium or entertainment center, and not how the revenue is realized as
argued by Appellants. (Answer 15-16).
Appellants discuss at length the attributes of the property right at issue
in this appeal versus that of a lease. (Appeal Br. 15-16). However, in light
of the breadth of the claim, the Appellants’ argument is not persuasive as to
error in the rejection because we find that the claims only require an
“occupancy interest” which we find includes a lease. As we set forth supra,
Appellants attempt to exclude ticket sales type lease holds in a claim
structure, but this limitation is indefinite under 35 U.S.C. 112, Second
Paragraph because the term “occupancy interest”, by definition includes a
lease, and thus Appellants’ arguments are critically flawed.
Appellants Brief at Sections C, D, E, and F restate that the rejection
covered under these sections are challenged for the same reasons as given
for claim 1. As such, we sustain these rejections for the same reason given
above in our analysis of claim 1.
Also in each of Sections C, D, E, and F of the Brief, Appellants make
a general allegation of teaching away for each of the additional references
used in the involved rejection, which we do not find persuasive because
there is no underlying reasoning given for why there is a teaching away
problem other than the general allegation. “It is not the function of this court
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to examine the claims in greater detail than argued by an appellant, looking
for nonobvious distinctions over the prior art.” In re Baxter Travenol
Labs, 952 F.2d 388, 391 (Fed. Cir. 1991). See also In re Wiseman, 596 F.2d
1019, 1022 (CCPA 1979) (arguments must first be presented to the board).
Concerning the rejection of independent claim 27, Appellants only
argument which differs from those advanced for claim 1 is to the deficiency
of Harmon. Claim 27 requires:
obtaining the agreement of each seat buyer to additionally pay an
annual differential fee which is equal to the difference between the price of a
season ticket for a like seat in each subsequent year and said annual
payment; …
using said differential fees for a second purpose including to fund the
operation of said sports stadium or entertainment center.
Appellants argue that:
By its very terms, the sale of the Harmon's PSLs,
which is only a license or a right to buy a season
ticket for existing venues or construction of new
venues that has nothing to do with operations of
the sports or entertainment venue and certainly is
not a differential fee as disclosed and claimed in
the present application. A differential fee is a
difference between two values.
(Appeal Br. 24).
In light of the breadth of the claim, the Appellants’ argument is not
persuasive as to error in the rejection. This is because we find that
Harmon’s PSL holder, who is required to purchase season tickets each
season of his/her license, is, in all likelihood, going to be paying an
increased price for the new season tickets over what was paid for last
season’s tickets- hence is paying a differential.
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That the differential is used to help fund the operations of the facility
would be a predicable use of the difference in fees, given that the capital
costs would be fixed except for the operational costs which would drive the
price difference. “When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the
same field or in a different one. If a person of ordinary skill in the art can
implement a predictable variation, § 103 likely bars its patentability.” KSR
Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1740 (2007).
Appellants argue that the Examiner has not articulated how the
combination of the teaching of Fitch, Harmon, and the teaching of Business
Wire can be combined. (Appeal Br. 24).
We disagree with Appellants because the Examiner’s Answer on page
18 sets forth how such a combination would occur and why, which
reasoning we find reasonable.
Appellants further argue that “Fitch and Harmon both teach away from
that which is disclosed in the present application, since Fitch and Harmon
teach the use of personal seat licenses, which only gives the user a right or in
some cases an obligation to buy season tickets.” (Appeal Br. 24).
We disagree with Appellants because Harmon is used by the Examiner
only to show that a differential, regardless of how the revenue is obtained,
can be applied to fees associated with luxury suites in Fitch to increase the
income stream from the luxury suites. (Answer 18).
Additionally, as found supra, we found that Fitch discloses an
occupancy interest involved with a suite is not based on paying for a season
ticket for a seat, but rather is based on allowing a given number of people to
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occupy the space during periods where the stadium is presenting an event,
which we find meets the claim requirement of not paying for a season ticket
for each seat.

CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-28 under
35 U.S.C. § 103(a).
We conclude the Examiner did not err in rejecting claims 1-28 under
35 U.S.C. § 35 U.S.C. § 101.

DECISION
The decision of the Examiner to reject claims 1-28 is AFFIRMED.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 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 CFR § 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 . . . .
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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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).

AFFIRMED; 37 C.F.R. § 41.50(b)

MP