Ex Parte Rey

Patent Trial and Appeal Board

May 5, 2016

12518096 (P.T.A.B. May. 5, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121518,096 0610512009 Eric Rey
20872 7590 05/09/2016
MORRISON & FOERSTER LLP
425 MARKET STREET
SAN FRANCISCO, CA 94105-2482
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
595792001500 2067
EXAMINER
KAZIMI, HAN! M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
05/09/2016 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):
EOfficeSF@mofo.com
PatentDocket@mofo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC REY
Appeal2013-008750
Application 12/518,0961
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPPER,
and SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final decision to reject claims 1-5, 7-12, 20, 22-25, and 37-39.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellant, the real party in interest is Arcadia
Biosciences, Inc. Appeal Brief filed October 8, 2012, hereafter "App. Br.,"
2.
Appeal2013-008750
Application 12/518,096
BACKGROUND
The invention relates to trading nitrogen credits on an electronic
trading market. Abstract; Specification, hereinafter "Spec.," i-f 2. The
nitrogen credits are calculated based on the determined amount of nitrogen
applied or to be applied to obtain a desired crop yield, using a genetically
modified version of a plant. Id. at i-f 5.
Representative claim 1 is reproduced from page 27 of the Claims
Appendix of the Appeal Brief (Claims App'x) as follows, with emphasis
added to relevant claim limitations:
1. A method of trading nitrogen credits on an
electronic trading market, the method comprising:
determining an amount of nitrogen applied or to
be applied to obtain a desired crop yield using a
genetically modified version of a plant, wherein the
genetically modified version of the plant has a nitrogen
utilization efficiency greater than a non-genetically
modified version of the plant;
calculating, using a seller terminal, an amount of
nitrogen credit available to be traded based on the
determined amount of nitrogen, wherein the determined
amount of nitrogen applied or to be applied to obtain the
desired crop yield using the genetically modified version
of the plant is used as an input when calculating the
amount of nitrogen credit available, wherein the amount
of nitrogen credit available to be traded is calculated by
the seller terminal; and
conveying at least a portion of the calculated
amount of nitrogen credit to one or more potential buyers
through the electronic trading market.
2
Appeal2013-008750
Application 12/518,096
In a Final Rejection, the Examiner rejects claims 1-5, 11-12, 20, 22-
25, and 37-39 under 35 U.S.C. § 103(a) as obvious over Faeth2 and Good,3
claim 7 over Faeth, Good, and Zimmerman4, claim 8 over Faeth, Good, and
Sowinski,5 claim 9 over Faeth, Good, Sowinski, and Walsh,6 claim 10 over
Faeth, Good, Sowinski, and Copenhaver.7 The Examiner also provisionally
rejects claims 1-5, 7-12, 20, 22-25, and 39 under nonstatutory obviousness-
type double patenting as unpatentable over co-pending Application
12/518,0958 in view of Zimmerman. Final Action9 mailed March 7, 2012,
hereinafter "Final Act.," 4--22, 29, 30; see also Ans. 2-14.
DISCUSSION
The Appellant presents common arguments for the obviousness
rejections for the grouping of claims 1-5, 7, 11-12, 20, 22-25, and 37-39,
2 US Publication 2002/0055902 Al, published May 9, 2002.
3 US Publication 2005/0044585 1A..l, published February 24, 2005.
4 US Publication 2005/0273358 Al, published December 8, 2005.
5 US Patent 6,601,033 Bl, issued July 29, 2003.
6 US Publication 2007/0016511 Al, published January 18, 2007.
7 US Publication 2003/0131372 Al, published July 10, 2003.
8 US Application 12/518,095, filed September 23, 2010.
9 A rejection made under 35 U.S.C. 101 as to claims 1-5, 7-10, 20, 22-24,
and 39 was withdrawn in the Examiner's Answer, mailed May 2, 2013,
hereinafter "Ans.," 3. Should there be further prosecution of this
application, the Examiner may wish to review all claims for compliance with
35 U.S.C. § 101 in light of the more recent Office guidance on patent
eligible subject matter found in "July 2015 Update: Subject Matter
Eligibility," 80 Fed. Reg. 45429 (July 30, 2015), and in "2014 Interim
Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec.
16, 2014), which supplements the "Preliminary Examination Instructions in
view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS
Bank International, et al.," Memorandum to the Examining Corps, June 25,
2014.
3
Appeal2013-008750
Application 12/518,096
with some additional issues presented as to the obviousness rejections of
claims 8, 9, and 10. We address the claims in a similar manner, using
claim 1 as representative for the grouping, and separately addressing the
additional arguments for claims 8, 9, and 10.
35 U.S.C. § 103(a)
Claims 1-5, 7, 11-12, 20, 22-25, and 37-39
For claims 1-5, 11-12, 20, 22-25, and 37-39, the Appellant argues
that Faeth and Good do not teach the step of calculating nitrogen credits
based on the amount of nitrogen applied (input), but instead, teach
calculating credits based upon the amount of emissions stored or discharged
(output). App. Br. 4--13; Reply Brief filed July 1, 2013, hereinafter "Reply
Br.," 2--4. With respect to the other claims in this grouping, the Appellant
asserts that the additional prior art references relied upon fail to cure the
deficiencies of the combination of Faeth and Good. App. Br. 15-20. The
Appellant also argues that although Good teaches using different amounts of
applied nitrogen, "the levels of nitrogen were not selected to obtain a desired
crop yield" and are directed to biomass. App. Br. 11; see, e.g., Good i-f 213,
Table 5. The Appellant additionally argues that the Examiner fails to
provide a valid rationale to modify Faeth with the teachings of Good. Id.
at 16-24.
The Examiner finds that Good determines an amount of nitrogen
applied or to be applied to obtain a desired crop yield using a genetically
modified version of a plant, and also that the release of greenhouse gas
emissions is a function of applied nitrogen. Ans. 4--5 (citing Good i-fi-14,
213-216). The Examiner also finds that Faeth discloses commodifying
environmental attributes, i.e., nutrient credits, and, because the release of
gaseous nitrogen components from fertilizers also exacerbates acid rain and
4
Appeal2013-008750
Application 12/518,096
the greenhouse gas effects such that there is a need for plants that are
capable of utilizing nitrogen more efficiently, a skilled artisan would be
motivated to modify the method of Faeth by incorporating the teachings of
Good to decrease nitrogen use. Id. at 7-8 (citing Faeth Abstract, i-fi-129, 30,
32, 34, 35, 45-50, 60; Good i-fi-14, 213-216). The Examiner notes that the
claims are not tied to a specific equation or means of determining an amount
of nitrogen applied or to be applied to obtain a desired crop. Id. at 5.
Upon consideration of the evidence on this record in light of the
arguments advanced by the Appellant, we find that the Appellant has not
identified reversible error in the Examiner's determination that claim 1 is
unpatentable under 35 U.S.C. § 103(a). Accordingly, we sustain the
Examiner's rejection of claim 1 for the reasons set forth in the Final Action
and the Answer. We add the following primarily for emphasis.
Claim 1 includes the step of calculating a nitrogen credit by
"determining an amount of nitrogen applied or to be applied." Good
discloses that the applied nitrogen from fertilizers exacerbates greenhouse
gas emissions, and its invention is directed to modified plant species that
have increased nitrogen use efficiencies. Good i-fi-1 3--4. We do not find the
Appellant's argument that the prior art does not teach the step of
determining an amount of nitrogen applied to be persuasive, nor that
biomass cannot be indicative of crop yield. Good recognizes the known
relationship between an amount of applied nitrogen and resulting emissions,
and Good discusses "optimal fertilizer levels" which may reasonably be
interpreted as equivalent to crop yield. Additionally, Faeth teaches
commodifying environmental attributes impacting nitrogen emissions
through nutrient management practices. Faeth i135. We, therefore, also do
not find the Appellant's argument that there is insufficient rationale for one
5
Appeal2013-008750
Application 12/518,096
of ordinary skill in the art to modify the teachings of Faeth with Good to be
persuasive, because Good is similarly directed to methods to reduce nitrogen
emissions (and increase environmental benefits).
We, therefore, sustain the rejections of claims 1-5, 7, 11, 12, 20, 22-
25, and 37-39 under 35 U.S.C. § 103(a).
Claim 8
Claim 8 includes the limitation, in relevant part, of "receiving seed
and/or license to technology from an entity in exchange for rights to at least
a portion of the calculated amount of nitrogen credit." The Examiner finds
that Faeth does not teach receiving seed and/or license to technology from
an entity in exchange for a portion of the calculated amount of greenhouse
gas emission credit, but Sowinski discloses the use of ipCredits for
improvements in a gas utility and one of ordinary skill in the art would have
been motivated to modify Faeth for such an exchange. Ans. 1 O; Final
Act. 10 (citing Sowinski 8:65---67, 34:27-39). The Appellant argues that a
natural gas filter of Sowinski is not a seed or a license to technology, as
required in the claim. App. Br. 21.
Upon consideration of the evidence on this record in light of the
arguments advanced by the Appellant, we find that the Appellant has not
identified reversible error in the Examiner's determination that claim 8 is
unpatentable under 35 U.S.C. § 103(a). Accordingly, we sustain the
Examiner's rejection of claim 8 for the reasons set forth in the Final Action
and the Answer, adding that a skilled artisan would recognize both seeds and
licenses to technology as different types of the same kind of goods of
Sowinski, namely, environmental assets, and further, that Sowinski teaches
the exchange of these goods in a form known as ipCredits.
6
Appeal2013-008750
Application 12/518,096
We, therefore, sustain the rejection of claim 8 under 35 U.S.C.
§ 103(a).
Claim 9
Claim 9 includes the limitation, in relevant part, of "transferring the
at least a portion of the calculated amount of nitrogen credit to the entity,
wherein the entity conveys the at least a portion of the amount of nitrogen
credit to the one or more potential buyers through the electronic trading
market." The Examiner finds that Walsh discloses the transfer of at least a
portion of the greenhouse gas emission credit by an entity to one or more
potential buyers, because it teaches resale, i.e. allows for reselling all or a
portion of the voucher to at least one other buyer without restriction.
Ans. 10-11; Final Act. 11 (citing Walsh i-fi-f 15, 28, 39). The Appellant
argues that Walsh does not identify the entity to which the credits are
conveyed, aside from "a buyer who desires" them. App. Br. 22 (citing
Walsh i-f 15).
Upon consideration of the evidence on this record in light of the
arguments advanced by the Appellant, we find that the Appellant has not
identified reversible error in the Examiner's determination that claim 9 is
unpatentable under 35 U.S.C. § 103(a) based upon the Examiner's findings.
The claim offers no requirement that the entity to which the credits are
conveyed be specifically identified, and Walsh discloses "reselling all or a
portion of the voucher to at least one other buyer without restriction."
Walsh i-f 15.
We, therefore, sustain the rejection of claim 9 under 35 U.S.C.
§ 103(a).
7
Appeal2013-008750
Application 12/518,096
Claim 10
Claim 10 includes the limitation, in relevant part, "transferring at
least a portion of proceeds received from trading the calculated amount of
nitrogen credit using the electronic trading market to the entity, wherein the
at least a portion of proceeds corresponds to the at least a portion of the
calculated amount of nitrogen credit." In the rejection of claim 10, the
Examiner acknowledges that Faeth alone does not explicitly disclose this
limitation and relies upon Copenhaver' s disclosure of royalty payments to
teach transferring a portion of proceeds received from trading greenhouse
gas emission credits. Ans. 12; Final Act. 12 (citing Copenhaver i1i131, 83).
The Examiner also finds that the skilled artisan would have been motivated
to modify Faeth by incorporating Copenhaver's royalty payments, because
the artisan would recognize an emissions credit as equivalent to a fee from a
new crop, where any one of a variety of methods, including royalty
payments, are utilized to receive a fee for the new crop. Id. The Appellant
argues that a royalty payment based on the sales price of a new crop is not
the same as proceeds received from trading the calculated amount of
greenhouse emissions credit. App. Br. 23.
Upon consideration of the evidence on this record in light of the
arguments advanced by the Appellant, we find that the Appellant has not
identified reversible error in the Examiner's determination that claim 10 is
unpatentable under 35 U.S.C. § 103(a). Accordingly, we sustain the
Examiner's rejection of claim 10 for the reasons set forth in the Final Action
and the Answer. We add the following primarily for emphasis.
The Appellant argues the cited references separately when they should
be considered in combination. One cannot show nonobviousness by
8
Appeal2013-008750
Application 12/518,096
attacking references individually where the rejections are based on
combinations of references. See In re Keller, 642 F.2d 413, 426 (CCPA
1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Per
Copenhaver, a royalty payment represents one of a variety of means of
payment which, when incorporated into Faeth's market system based on
environmental commodities that include nutrient credits, teaches the
elements of claim 10.
We, therefore, sustain the rejection of claim 10 under 35 U.S.C.
§ 103(a).
Nonstatutory Obviousness-Type Double Patenting
As noted above, the Examiner provisionally rejected instant claims 1-
5, 7-12, 20, 22-25, and 39 under nonstatutory obviousness-type double
patenting as unpatentable over co-pending Application 12/518,095 in view
of Zimmerman. No patent has issued from that application. The Appellant
presents no arguments addressing the Examiner's provisional nonstatutory
obviousness-type double patenting rejection of these claims. As this is a
provisional rejection, it is premature for the Board to address it. See In re
Moncla, 95 USPQ2d 1884, 1885 (BPAI 2010) (precedential).
SUMMARY
The rejections of claims 1-5, 7-12, 20, 22-25, and 37-39 under
35 U.S.C. § 103(a) are affirmed.
We do not reach the rejections of claims 1-5, 7-12, 20, 22-25, and 39
on the grounds of obviousness-type double patenting.
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).
9
Appeal2013-008750
Application 12/518,096
AFFIRMED
10