Ex Parte ReyDownload PDFPatent Trials and Appeals BoardMay 5, 201612518096 - (D) (P.T.A.B. May. 5, 2016) Copy Citation 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 Copy with citationCopy as parenthetical citation