Ex Parte Murphy

Board of Patent Appeals and Interferences

May 21, 2010

09777761 (B.P.A.I. May. 21, 2010)

10UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte GERALD B. MURPHY
___________

Appeal 2009-001828
Application 09/777,761
Technology Center 3600
____________

Decided: May 21, 2010
____________

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
BIBHU R. MOHANTY, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Gerald B. Murphy (Appellant) seeks our review under 35 U.S.C.
§ 134 (2002) of the final rejection of claims 15 and 17-29. We have
jurisdiction under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We REVERSE and enter a new ground of rejection pursuant to 37
CFR 41.50(b). 1

THE INVENTION
This invention is a method of creating marketing plans for an
agricultural producer. Specification 6:3-5
Claim 15, reproduced below, is illustrative of the subject matter on
appeal.
15. A computer-assisted method of providing
agricultural marketing services to independent
agricultural producers to assist in raising income of
the agricultural producers, comprising:
developing written agricultural marketing
action plans for the agricultural producers, the
agricultural marketing action plans requiring
updated marketing information;
tying financial obligations of the agricultural
producers to the use of the written agricultural
marketing action plans such that the agricultural
producers are required to commit to using the

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed Aug 13, 2007) and Reply Brief (“Reply Br.,” filed Feb. 13, 2008),
and the Examiner’s Answer (“Answer,” mailed Dec. 13, 2007).

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written agricultural marketing plans as a condition
for receiving financing;
electronically providing marketing
information to the agricultural producers in order
to update the written agricultural marketing action
plans;
wherein the updated marketing information
comprises probabilities of price targets;
wherein the step of developing written
agricultural marketing action plans for each of the
agricultural producers comprises:
(a) eliciting information from the producer;
(b) performing a financial assessment for an
agricultural business of the independent
producer;
(c) determining a financial assessment score
based on the financial assessment;
(d) calculating a marketing financial risk
score wherein the marketing financial risk
score is defined as a numeric value
describing financial risks related to markets
and income of each agricultural enterprise
associated with the agricultural business;
(e) determining pre-sell quantities using the
financial assessment score, the marketing
financial risk score and a price risk
associated with a commodity market;
(f) calculating a level of crop revenue
insurance to assure a predetermined level of
income from sale of predetermined pre-sell
quantities of crops for use in meeting the
financial obligations, such that the financing
is underwritten by pre-selling and the pre-
selling is underwritten by the level of crop
revenue insurance;
(g) forming a plan of action for agricultural
marketing which makes decisions based on
the marketing information, the financial
assessment, the marketing financial risk
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score, the pre-sell quantities, and the level of
crop revenue insurance.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Schneider
Remley
Hay
US 6, 990, 459 B2
US 2002/0023052 A1
US 2002/0059091 A1
Jan 24, 2006
Feb 21, 2002
May 16, 2002
Daniel M. O’Brien. Grain Marketing Plans For Farmers. Kansas
State University. July 2000. available at
http://agmarketing.extension.psu.edu/Commodity/PDFs/mf2458.pdf.
[Hereinafter, O’Brien].
Jack P.Friedman. Dictionary of Business Terms (Barron's Business
Guides). (3rd Edition. 2000). [Hereinafter, Friedman].

The following rejections are before us for review:
1. Claims 15 and 29 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Hay, Remley, and O’Brien.
2. Claims 17 and 23 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Hay and O’Brien.
3. Claims 18 and 19 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Remley, Hay, and O’Brien.
4. Claims 20, 21, and 22 are rejected under 35 U.S.C. §103(a) as
being unpatentable over Hay, O’Brien, and Friedman.
5. Claims 24-28 are rejected under 35 U.S.C. §103(a) as being
unpatentable over Hay, O’Brien, and Schneider.
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ISSUES
The first issue is whether claims 15 and 29 are unpatentable under 35
U.S.C. § 103(a) over the combination of Hay, Remley, and O’Brien.
Specifically, the issue is whether Hay teaches a step of calculating a
marketing financial risk, where the marketing financial risk score is defined
as a numeric value describing financial risks related to markets and income
of each agricultural enterprise associated with the agricultural business, as
asserted by the Examiner. The rejection of claims 17 and 20-28 under 35
U.S.C. § 103(a) over Hay, O’Brien, Friedman and Schneider also turn on
this issue.
The second issue is whether claims 18 and 19 are unpatentable under
35 U.S.C. § 103(a) over Remley, Hay, and O’Brien. Specifically, the issue
is whether one of ordinary skill in the art would have been led by Remley,
Hay, and O’Brien to a step of developing a strategic marking action plan
which includes a determination of a marketing financial risk score defining
financial risks related to markets and income of the producer.

FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Inc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
The scope and content of the prior art

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Hay
1. Hay describes a method and apparatus that allows an agricultural
entity to identify farms and areas to grow a crop of interest, price
contracts to grow the crop of interest, and perform additional
economic analysis related to the crop. Hay [0024].
2. Hay’s paragraph [0052] states:
The pricing engine 66 cooperates with the
production estimator 62 and the risk identifier 64
to develop prices(s) to be offered the farm(s) to
grow the crop of interest to the agricultural entity.
For each farm, the pricing engine 66 develops the
price to be offered based upon: (a) the expected
yield of the subject farm, (b) the risk factor(s) for
the subject farm, (c) the customer market price
expected to be earned by the product of interest;
(d) the profit to be earned by the farm for the
competing product, and (e) the profit to be earned
by the agricultural entity. Thus, the pricing engine
calculates the price at which the farm(s) of interest
would have a financial incentive to grow the crop
of interest taking into account any premiums to be
provided by the agricultural entity based upon the
preceding factors (a) through (e). If a farm under
analysis is associated with more than one elevator
and/or loader, the offer developer 60 preferably
determines the possible offer based upon the
elevator/loader that will enable that farm to earn
the highest profit.

3. Hay’s paragraph [0051] describes a database of risk factors
associated with the farm of interest.
4. Hay’s paragraph [0065] describes a model for calculating the
expected revenue of a farm.

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Remley
5. In the rejection of claims 15 and 29, the Examiner cited Remley to
teach tying financial obligations of the agricultural producers to the
use of agricultural plans and that update marketing information
comprises probabilities of price targets. Answer 4-5.
6. In the rejection of claim 18, the Examiner states that: “Remley
does not disclose . . . a marketing financial risk score defining
financial risks related to markets and income of the producer to
assist in determining the assured income for the producer.”
O’Brien
7. In the rejections of claims 15, 17, and 29, the Examiner cited
O’Brien to teach receiving a price risk and calculating a level or
crop revenue insurance. Answer 7-8 and 9.
8. In the rejection of claim 18, the Examiner cited O’Brien to teach
implementing a strategic marketing plan, updating the strategic
marketing plan, and underwriting the strategic marketing plan with
crop insurance. Answer 12.
Friedman
9. The Examiner cited Friedman to teach a weighted Z score.
Answer 12.
Schneider
10. The Examiner cited Schneider to teach calculating a level of crop
revenue insurance as recited in claims 24 and 25. Answer 13-15.
Any differences between the claimed subject matter and the prior art
11. Hay does not teach a step of calculating a marketing financial risk
score wherein the marketing financial risk score is defined as a
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numerical value describing financial risk related to markets and
income of each agricultural enterprise associated with the
agricultural business.
The level of skill in the art
12. Neither the Examiner nor the Appellant has addressed the level of
ordinary skill in the pertinent art of agricultural management and
marketing. We will therefore consider the cited prior art as
representative of the level of ordinary skill in the art. See Okajima
v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he
absence of specific findings on the level of skill in the art does not
give rise to reversible error ‘where the prior art itself reflects an
appropriate level and a need for testimony is not shown’”)
(Quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755
F.2d 158, 163 (Fed. Cir. 1985)).
Secondary considerations
13. There is no evidence on record of secondary considerations of non-
obviousness for our consideration.

PRINCIPLES OF LAW
Obviousness
Section 103 forbids issuance of a patent
when ‘the differences between the subject matter
sought to be patented and the prior art are such that
the subject matter as a whole would have been
obvious at the time the invention was made to a
person having ordinary skill in the art to which
said subject matter pertains.
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KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
obviousness is resolved on the basis of underlying factual determinations
including (1) the scope and content of the prior art, (2) any differences
between the claimed subject matter and the prior art, and (3) the level of skill
in the art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). See also
KSR, 550 U.S. at 407 (“While the sequence of these questions might be
reordered in any particular case, the [Graham] factors continue to define the
inquiry that controls.”) The Court in Graham further noted that evidence of
secondary considerations “might be utilized to give light to the
circumstances surrounding the origin of the subject matter sought to be
patented.” Graham, 383 U.S. at 17-18.

ANALYSIS
The rejection of claims 15 and 29 under 35 U.S.C. §103(a) as being
unpatentable over Hay, Remley, and O’Brien.
Claim 15
Claim 15 recites a step of “calculating a marketing financial risk score
wherein the marketing financial risk score is defined as a numerical value
describing financial risk related to markets and income of each agricultural
enterprise associated with the agricultural business.” In the rejection, the
Examiner cites paragraph [0052] of Hay to teach the step of calculating a
marketing financial risk score. Answer 4. The Appellant argues that
paragraph [0052] of Hay does not describe a marketing financial risk score.
App. Br. 8-9 and Reply Br. 4. The Appellant states:
In a production contract of Hay, there is no
marketing as the producer does not own the crop
grown, but rather agrees to produce a crop for a
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contracting company according to the
specifications of the contracting company. In a
product contract of Hay, there could be no
marketing financial risk as there is no marketing of
crops by the producer, because the producer does
not own or sell the crop, but rather is paid for
producing the crop for someone else. A
production contract is unrelated to an
independent marketing plan and does not
provide for quantifying a marketing financial
risk score.
App. Br. 8 (emphasis original).
The Examiner responds by additionally citing paragraphs [0051] and
[0065] of Hay and asserting that Hay calculates the price at which the farm
of interest would have a financial incentive to grow the crop of interest.
Answer 19-20. Given this, the Examiner seems to be equating the calculated
price to the claimed marketing financial risk sore.
We find that one of ordinary skill in the art would not have been led
by Hay’s description of calculating an offer price to the claimed step of
calculating a marketing financial risk score. Claim 15 defines marketing
financial risk score as “a numerical value describing financial risk related to
markets and income of each agricultural enterprise associated with the
agricultural business.” Paragraph [0052] describes a price engine that is
calculating a price to be offered to farms to grow the crop of interest, which
is describes as “the price at which the farms of interest would have a
financial incentive to grow the crop of interest.” FF 2. The offer price is
calculated based on: 1) the expected yield of the farms; 2) the risk factors for
the subject farm; 3) the customer market price; 4) the expected profit for the
farm and 5) the expect profit for the agricultural entity. Id.. Paragraphs
[0051] and [0065] further describe the farm risk factors and the expected
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profits (FF 3-4), which are used to calculate the offering price (FF 2). A step
of calculating an offer price as described in Hay does not teach a step of
calculating a marketing financial risk score that describes a financial risk
related to markets and income of each agricultural enterprise associated with
the agricultural business. The calculations described in Hay are acts that
result in an offer price and not a marketing financial risk score. We note that
the Examiner does not rely upon Remley or O’Brien to teach this limitation.
See FF 5 and FF 7.
Further, we note that claim 15 further recites a step of using the
marketing financial risk score to determine pre-sell quantities. Hay does not
teach using the offering price to determine a pre-sell quantity of crops but
instead uses the expected yield of the farm to calculate the offering price.
FF 2.
Accordingly, we reverse the rejection of claim 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Hay, Remley, and O’Brien.

Claim 29
Like claim 15, claim 29 also recites a step of determining a marketing
financial risk score. Claim 29 recites “determining a marketing financial
risk score associated with financial risks related to markets and income of
each of the agricultural enterprises.” For the same reasons as discussed
above with regards to claim 15, we find that the rejection of claim 29 is
overcome. Accordingly, we reverse the rejection of claim 29 under 35
U.S.C. § 103(a) as being unpatentable over Hay, Remley, and O’Brien.

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The rejection of claims 17 and 23 under 35 U.S.C. §103(a) as being
unpatentable over Hay and O’Brien.
Like claim 15 above, claim 17 recites the same step of calculating a
marketing financial risk score and the same step of determining pre-sell
quantities. In rejecting claim 17, the Examiner again cites to paragraph
[0052] of Hay in the rejection to teach this limitation. Answer 8-9. The
Examiner does not rely upon O’Brien to teach this limitation. See FF 5 and
7. For the same reasons as discussed above with regards to claim 15, we
find that the rejection of claim 17 is overcome. Accordingly, we reverse the
rejection of claim 17, and claim 23, dependent thereon, under 35 U.S.C.
§ 103(a) as being unpatentable over Hay and O’Brien.

The rejection of claims 18 and 19 under 35 U.S.C. §103(a) as being
unpatentable over Remley, Hay, and O’Brien.
Also like claim 15, claim 18 requires a determination of “a marketing
financial risk score defining financial risks related to markets and income of
the producer to assist in determining the assured income for the producer.”
To reject claim 18, the Examiner admits that Remley does not disclose this
step and again cites paragraph [0052] of Hay to teach this limitation.
Answer 11. The Examiner then asserts that: “At the time of the invention, it
would have been obvious to a person of ordinary skill in the art to combine
the aforementioned features of Hay within Remley.” The Examiner does not
rely upon Remley or O’Brien to teach this limitation. See FF 6 and 8.
For the reasons given above, we find that one of ordinary skill in the
art would not have been led the combination of Remley or Hay to a step of
determining a marketing financial risk score as recited in claim 18. We find
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that the rejection of claim 18 is overcome and, accordingly, we reverse the
rejection of claim 18, and claim 29, dependent thereon, under 35 U.S.C.
§ 103(a) as being unpatentable over Remley, Hay, and O’Brien.

The rejection of claims 20, 21, and 22 under 35 U.S.C. §103(a) as being
unpatentable over Hay, O’Brien, and Friedman.
This rejection is directed to claims dependent on claim 17, whose
rejection we have reversed above. For the same reasons, we will not sustain
the rejections of claims 20, 21, and 22 over the cited prior art. Cf. In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious."). Further, we note that the Examiner does not rely upon
Friedman to teach the limitation at issue with regards to independent claim
17 above. See FF 9.

The rejection of claims 24-28 under 35 U.S.C. §103(a) as being
unpatentable over Hay, O’Brien, and Schneider.
This rejection is also directed to claims dependent on claim 17, whose
rejection we have reversed above. For the same reasons, we will not sustain
the rejections of claims 24-28 over the cited prior art. Cf. In re Fritch, 972
F.2d 1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the
independent claims from which they depend are nonobvious."). Further, we
note that the Examiner does not rely upon Schneider to teach the limitation
at issue with regards to independent claim 17 above. See FF 10.

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NEW GROUND OF REJECTION
Pursuant to 37 C.F.R. 41.50(b), we enter a new grounds of rejection
on claims 17-26 and 29 under 35 U.S.C. § 101.
We reject claims 17-26 and 29 under 35 U.S.C. § 101 as being drawn
to nonpatentable subject matter.
First, taking claim 18 as representative for claims 18 and 19, claim 18
recites a method of providing assured income for agricultural crops. The
method includes steps, and claim 18 is thus nominally drawn to a process.
However,
[T]he proper inquiry under § 101 is not whether the
process claim recites sufficient "physical steps," but
rather whether the claim meets the machine-or-
transformation test. As a result, even a claim that recites
"physical steps" but neither recites a particular machine
or apparatus, nor transforms any article into a different
state or thing, is not drawn to patent-eligible subject
matter. Conversely, a claim that purportedly lacks any
"physical steps" but is still tied to a machine or achieves
an eligible transformation passes muster under § 101.
In re Bilski, 545 F.3d 943, 961 (Fed. Cir. 2008) (en banc)(footnotes
omitted).
Claim 18 is not tied to a particular machine or apparatus nor does it
transform a particular article into a different state or thing. Claim 18 recites
nothing that would transform a particular article into a different state or
thing. Further, claim 18 is not tied to a particular machine or apparatus.
Claim 18 does not recite any machine or apparatus. Accordingly, we reject
claims 18 and 19 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter.
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Next, taking claim 17 as representative for claims 17, 20-26, and 29,
claim 17 recites a “computer-assisted” method of creating a strategic
agricultural marketing plan for an agricultural business of an independent
agricultural producer. The method includes steps, and claim 17 is thus
nominally drawn to a process. Again, we apply the machine-or-
transformation test above. Claim 17 recites nothing that would transform a
particular article into a different state or thing. Therefore, the issue is
whether claim 17 is tied to a particular machine or apparatus. While claim
17 does recite “computer-assisted” in the preamble, we find this a nominal
recitation of structure which does not tie the claimed process to a particular
apparatus. We note that the body of claim 17 does not include any
recitations of a machine or apparatus. Accordingly, we reject claims 17-26
and 29 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter.
Finally, claim 15 recites a “computer-assisted” method of creating a
strategic agricultural marketing plan for an agricultural business of an
independent agricultural producer. The method includes steps, and claim 15
is thus nominally drawn to a process. Again, we apply the machine-or-
transformation test as above. Claim 15 recites nothing that would transform
a particular article into a different state or thing. Therefore, the issue is
whether claim 15 is tied to a particular machine or apparatus.
Like claim 17 above, claim 15 recites “computer-assisted” in the
preamble and further recites that the step of “providing” is done
“electronically.” We find these to be a nominal recitation of structure which
does not tie the claimed process to a particular apparatus. We note that
claim 15 does not include any other recitations of a machine or an apparatus.
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Accordingly, we reject claim 15 under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.

CONCLUSIONS OF LAW
We conclude that the Appellant has overcome the rejection of:
claims 15 and 29 under 35 U.S.C. §103(a) as being unpatentable over
Hay, Remley, and O’Brien;
claims 17 and 23 under 35 U.S.C. §103(a) as being unpatentable over
Hay and O’Brien;
claims 18 and 19 under 35 U.S.C. §103(a) as being unpatentable over
Remley, Hay, and O’Brien;
claims 20, 21, and 22 under 35 U.S.C. §103(a) as being unpatentable
over Hay, O’Brien, and Friedman; and
claims 24-28 under 35 U.S.C. §103(a) as being unpatentable over
Hay, O’Brien, and Schneider.
We enter a new ground of rejection for claims 17-26 and 29 under 35
U.S.C. § 101 as being directed to non-statutory subject matter.

DECISION
The decision of the Examiner to reject claims 15 and 17-29 is
reversed.
We enter a new ground of rejection on claims 17-26 and 29.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
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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)

mev

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