Ex Parte Kraan et al

Patent Trial and Appeal Board

May 31, 2017

13384445 (P.T.A.B. May. 31, 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.
13/384,445 03/29/2012 Stefan Kraan 9251.0002 (0168 0005) 1013
152 7590 05/31/2017
CHERNOFF, VILHAUER, MCCLUNG & STENZEL, LLP
111 SW Columbia Street
Suite 725
PORTLAND, OR 97201
EXAMINER
ZILBERING, ASSAF
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
05/31/2017 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 STEFAN KRAAN, PATRICK MARTIN, and COLIN MAIR1
Appeal 2016-006195
Application 13/384,445
Technology Center 1700
Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1, 2, 5—14, and 28—37. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 The real party in interest is identified as OCEAN HARVEST
TECHNOLOGY (CANADA) INC. App. Br. 3.
Appeal 2016-006195
Application 13/384,445
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. An additive for use in feed for fish and other marine
animals containing between about 40—75% (by weight) of Ulva
Lactuca (“Ulva”), between about 5—10% (by weight) of
Sargassum, between about 2—8% (by weight) of Gracilaria and
between about .5—7.0% (by weight) of Ascophyllum nodosum
(“Asco”).
App. Br. 7 (Claims App’x).
Appellants request review of the Examiner’s rejection of claims 1, 2,
5—14, and 28—37 under 35 U.S.C. § 101 holding that the claimed invention is
not directed to patent eligible subject matter. App. Br. 3; Final Act. 2—3.
Appellants do not argue any claim separately from the other claims.
See generally Appeal Brief. Accordingly, we select claim 1 as
representative of the subject matter before us on appeal. Claims 2, 5—14,
and 28—37 stand or fall with claim 1.
OPINION
The Examiner determined that representative claim 1 is directed to
patent ineligible subject matter as natural phenomena, i.e., law of
nature/natural principles, and does not recite additional elements so as to
confer patent eligibility. Final Act. 2—3 (citing Funk Brothers Seed Co. v.
Kalo Inoculant Co., 333 U.S. 127 (1948)), 12. The Examiner found that
Ulva Lactuca, Sargassum, Gracilaria, and Ascophyllum nodosum, the
components of the claimed composition, are naturally occurring and thus,
the additive composition recited in representative claim 1 comprising these
naturally occurring components appears to be a natural product that is not
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Application 13/384,445
markedly different in structure from the individual naturally occurring
products. Id. at 3.
In analyzing patent eligibility questions under 35 U.S.C. § 101, the
Supreme Court instructs us to “first determine whether the claims at issue
are directed to a patent-ineligible concept.” Alice Corp. Pty. Ltd. v. CLS
Bank Int’l, 134 S. Ct. 2347, 2355 (2014). If this threshold is met, we move
to a second step of the inquiry and “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.” Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 79, 78 (2012)).
Here, the claims are directed to a mixture of naturally occurring and
available brown, red, and green seaweeds in specific amounts to form an
additive for fish feed where each seaweed component has a property that
either improves appearance and taste of the fish or helps to combat sea lice.
App. Br. 4; Spec. Tflf 12, 20.
The question under Alice’s first step turns on whether the claimed
combination of seaweed components has markedly different characteristics
relative to the individual components such that it can be considered to not be
a product of nature. We note, “[a]t some level, ‘all inventions . . . embody,
use, reflect, rest upon, or apply laws of nature, natural phenomena, or
abstract ideas,”’ and whether one takes a macroscopic or microscopic view
of a claim may be determinative on the issue. Alice, 134 S. Ct. at 2354
(quoting Mayo, 566 U.S. at 71); see also Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1299-1300 (Fed. Cir. 2016).
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Appeal 2016-006195
Application 13/384,445
Appellants assert the combination of the individual seaweed
components results in properties that improve taste of the fish and deter sea
lice and cite to paragraph 12 of the Specification in support of this assertion.
App. Br. 4—5. Specifically, Appellants rely on the following statement from
paragraph 12 of the Specification: “The invention replaces the synthetic
additives with a sustainable natural product that improves the nutritional
value of the farmed fish, qualifies the fish for marketing as organic, reduces
the environmental impact of fish farming practices and may replace the
chemical use of lice treatment.”
In the Specification, Appellants disclose the following about the
individual seaweed components of the claimed additive composition:
a. Ulva Lactuca- contains Vitamin C (antioxidant), strengthens
immune defense system, useful for flesh coloring (Spec. 132);
b. Sargassum- contains high levels of alginates and fucoidan,
which have anti-bacterial and antiviral properties (id. 136);
c. Gracilaria- contains high levels of bromophenolic compounds
improving taste of the farmed marine animal (id. 137);
d. Ascophyllum nodosum- contains high levels of fucoidan, which
has anti-bacterial and antiviral properties (id. 134).
Appellants also disclose that fucoidan is known to have a positive
effect on skin and may help to combat sea lice. Id. ^ 21.
Based on this disclosure, the individual seaweed components of the
claimed additive composition are already known to have properties that
either improve taste of the fish or deter sea lice. Thus, there is a reasonable
basis for the Examiner to conclude that the claimed composition of seaweeds
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Application 13/384,445
falls under the product of nature exception under Alice’s first step. Ans. 11—
12.
We find no persuasive merit in Appellants’ conclusory argument that
the statement from paragraph 12 of the Specification noted above is
evidence that the combination of seaweed components possess markedly
different characteristics when compared to the individual seaweed
components. These arguments do not adequately address the Examiner’s
determination that there is no indication that the mixture of seaweeds and
other naturally occurring constituents have any characteristics that are
different from the individual seaweeds and other naturally occurring
constituents. Id. at 12. “Attorney’s argument in a brief cannot take the place
of evidence.” In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974); see also In
re Lindner, 457 F.2d 506, 508 (CCPA 1972) (“[M]ere conclusory statements
in the specification and affidavits are entitled to little weight. . . .”).
We have also considered Appellants’ argument that the subject matter
of claim 1 does not attempt to tie up seaweed or even the ones of the recited
seaweed species which may be aggregated in proportions other than those
specified in the claims or for non-analogous uses or which may be replaced
in a food additive by one or more of the thousands of other seaweed species.
App. Br. 4. We find this argument unavailing because it does not address
the Markedly Different Characteristics Analysis applied by the Examiner.
This argument intends to address an analysis, under a Streamlined Eligibility
Analysis, to determine if a claim is directed to an invention that clearly does
not seek to tie up any judicial exception when viewed as a whole. 2014
Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg. 241
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Application 13/384,445
(December 16, 2014), pp. 74622, 74625. An example of a claim reciting a
nature-based product of this type is a claim directed to an artificial hip
prosthesis coated with a naturally occurring mineral that is not an attempt to
tie up the mineral because the focus of the claimed invention is the artificial
hip prosthesis. Id. at 74625. Representative claim 1, however, is a claim
seeking to tie up a judicial exception because the focus of the claimed
invention is a composition comprising products of nature (seaweeds) and, as
a result, the Examiner proceeded with a different analysis, the Markedly
Different Characteristics Analysis, in the first step of Alice to determine its
subject matter eligibility. Id. at 74623. Thus, the argument does not address
the test applied by the Examiner. We further note that Funk Brothers, supra,
is not concerned with the issue of tying up an exception.
Thus, Appellants have not established error in the Examiner’s
determination that the subject matter of representative claim 1 is directed to
a judicial exception (a product of nature) under the first step of Alice. Id. at
11-12.
The first threshold under Alice is met. We now turn to the second step
under Alice to “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.” Alice,
134 S. Ct. at 2355.
The Examiner found representative claim 1 does not include
additional elements that are sufficient to amount to significantly more than
the judicial exception under the second threshold under Alice. Final Act. 12.
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Application 13/384,445
Appellants present no arguments in the Appeal Brief addressing the
second step under Alice. See generally, Appeal Brief. Further, Appellants
present no arguments specifically refuting the Examiner’s determination that
representative claim 1 does not include “additional elements [that]
‘transform the nature of the claim’ into a patent-eligible application.” See
generally, Appeal Brief; Ans. 12; Alice, 134 S. Ct. at 2355.
Thus, Appellants have not established error in the Examiner’s
determination that the subject matter of representative claim 1 lacks
additional elements that transforms the subject matter of the claim into a
patent-eligible application under the second step of Alice. Ans. 12.
Accordingly, we affirm the Examiner’s rejection of claims 1, 2, 5—14,
and 28—37 under 35 U.S.C. § 101 for the reasons presented by the Examiner
and given above.
We note that Appellants presented arguments directing attention to
“trial” (i.e., experimental) evidence in the Specification addressing the issue
of markedly different characteristics for the first time in the Reply Brief filed
June 2, 2016. Reply Br. 3^4. Any argument not presented in the Appeal
Brief will not be considered when filed in a Reply Brief, absent a showing of
good cause explaining why the argument could not have been presented in
the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI
2010) (informative) (“[T]he reply brief [is not] an opportunity to make
arguments that could have been made in the principal brief on appeal to
rebut the Examiner’s rejections, but were not.”); see also 37 C.F.R. §
41.41(b)(2). Appellants have not shown good cause why this argument
should now be considered.
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Appeal 2016-006195
Application 13/384,445
DECISION
The rejection of claims 1,2, 5—14, and 28—37 under 35U.S.C§ 101 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)(l)(iv).
AFFIRMED
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