George Sugihara

Patent Trials and Appeals Board

Nov 7, 2019

11716382 - (D) (P.T.A.B. Nov. 7, 2019)

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.
11/716,382 03/07/2007 George Sugihara OCNRE.001A 2331
20995 7590 11/07/2019
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
RUHL, DENNIS WILLIAM
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
11/07/2019 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):
efiling@knobbe.com
jayna.cartee@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEORGE SUGIHARA
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Appeal 2018-003802
Application 11/716,382
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
NINA L. MEDLOCK, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 60–63. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed July 11, 2017) and Reply Brief (“Reply Br.,” filed February 15, 2018),
and the Examiner’s Answer (“Ans.,” mailed December 18, 2017) and Non-
Final Office Action (“Non-Final Act.,” mailed March 9, 2017). Appellant
identifies the real party in interest as Ocean Resource Exchange, LLC.
Appeal Br. 3.
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Application 11/716,382

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CLAIMED INVENTION
Appellant’s claimed invention “relates to systems and methods for
apportioning the quota amongst, for example fishermen, of by-catch
unsought-for marine animals” (Spec. ¶ 2).
Claim 60, reproduced below with bracketed notations added, is the
sole independent claim, and is representative of the claimed subject matter:
60. A system comprising:
[(a)] a computer connected to a computer network and
comprising:
[(a1)] a database storing information relating to a
by-catch quota, the information comprising a species to
which the by-catch quota relates, a quantity of that species
that an entity is authorized to by-catch, a recent by-catch
capture history of a plurality of entities, and a time period
to which the quota relates; and
[(a2)] a processor configured to initially distribute
the by-catch quota amongst the plurality of entities based
at least in part on the recent by-catch capture history,
wherein an entity having a low by-catch capture rate
relative to other entities in a previous time period is
allocated a larger fraction of the by-catch quota in a
subsequent time period.

REJECTION
Claims 60–63 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.2

2 Concurrently with the filing of a Notice of Appeal on June 8, 2017,
Appellant filed an Amendment canceling claims 1–59 and 64–73.
Appeal 2018-003802
Application 11/716,382

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ANALYSIS
This application was previously before us on appeal. Of relevance
here, in the previous appeal, Ex parte Sugihara, Appeal No. 2013-004762,
at 11 (PTAB Jan. 19, 2016), we affirmed the Examiner’s rejection of
claims 1, 3–7, 9–13, 25, 31–51, and 68–70 under 35 U.S.C. § 101 but
reversed the § 101 rejection of claims 60–63.
Appellant argues that the Board’s previous decision is the “law of the
case” and controls the prosecution of this application. Therefore, according
to Appellant, “the Examiner should not have reissued the § 101 rejection [of
claims 60–63] that the Board already reversed” (Appeal Br. 6).
The law of the case doctrine is a judicially-created doctrine designed
to prevent the re-litigation of issues that already have been decided. It also
has been routinely applied by federal administrative agencies to give
preclusive effect to their earlier decisions in the same matter. Consistent
with other administrative bodies, the Board has applied the law of the case
doctrine and has held that all findings and conclusions in a first decision by
the Board — whether express or implicit — are entitled to issue-preclusive
effect during further prosecution of the same application. See, e.g., Ex parte
Fisher, Appeal No. 2013-000665, 2015 WL 5782991, at *4 (PTAB Sept. 16,
2015); Ex parte Keggenhoff, Appeal No. 2012-001720, 2014 WL 3950403,
at *5 (PTAB Aug. 11, 2014); Ex parte Wood, Appeal No. 2010-006834,
2012 WL 2929626, at *3 (BPAI July 12, 2012). Under the law of the case
doctrine, the Board will, thus, generally adhere to a decision in a prior
appeal in the same case unless one of three exceptions exists: (1) the
evidence in a subsequent trial contains new and different material evidence;
(2) there has been an intervening change of controlling legal authority; or
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Application 11/716,382

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(3) the earlier ruling was clearly erroneous and would work a manifest
injustice. See Gould, Inc. v. United States, 67 F.3d 925, 930 (Fed. Cir.
1995).
It is manifest here that exception (1) exists, and that the “law of the
case” doctrine does not apply to the present appeal, in that the “evidence”
before us now is substantially different from the “evidence” before the panel
in the prior Board decision. Claim 60, as previously presented before the
Board, recited a system comprising “a computer connected to a computer
network and having a database” for storing particular information:
60. A system comprising:
a computer connected to a computer network and having
a database for storing information relating to a by-catch quota,
the information comprising:
a species to which the by-catch quota relates,
a quantity of that species that an entity is authorized to by-
catch, and
a time period to which the quota relates.
During prosecution, subsequent to the Board’s January 19, 2016 decision,
independent claim 60 was amended to its current form, i.e., to recite that the
computer additionally comprises
a processor configured to initially distribute the by-catch quota
amongst the plurality of entities based at least in part on the
recent by-catch capture history, wherein an entity having a low
by-catch capture rate relative to other entities in a previous time
period is allocated a larger fraction of the by-catch quota in a
subsequent time period[,]
i.e., limitation (a2).
The only issue decided in the previous appeal, and, therefore, the only
issue that is the basis for binding law of the case, concerns the patent
eligibility of claim 60, as presented at the time of the previous appeal.
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Application 11/716,382

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Claim 60, now before us, is not the same claim that was considered in the
previous Board decision, and raises distinct factual and legal issues that were
not previously before this Board. Because the factual and legal
considerations affecting the patent eligibility of claims 60–63 have changed
since the previous decision, we are not persuaded that the prior Board
decision constitutes the law of the case in this appeal.
Appellant asserts that the amendment to claim 60 merely narrowed
claim 60 to include the features that the Board found were not disclosed by
any of the cited references (Appeal Br. 6). And Appellant argues that if the
broader version of claim 60 was not directed to an abstract idea, the
amended narrower version of the claim also cannot be directed to an abstract
idea because “the claim is not directed to anything new; the claim now
covers less not more and is more concrete and specific not less” (id. at 7).
Patent eligibility does not turn on whether or not a claim is narrowly
drawn. Thus, whether or not claim 60 has been narrowed does not affect
whether the claim is directed to an abstract idea under step one of the
Mayo/Alice framework.3 See, e.g., Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1321 (Fed. Cir. 2016) (“A narrow claim directed to an
abstract idea, however, is not necessarily patent-eligible”); see also BSG
Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018)

3 The Supreme Court, in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208
(2014), reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step
in that analysis is to “determine whether the claims at issue are directed to
one of those patent-ineligible concepts.” Id.
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Application 11/716,382

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(“[A] claim is not patent eligible merely because it applies an abstract idea in
a narrow way.”).
Appellant ostensibly maintains otherwise (Reply Br. 3–4). But, it also
is immaterial, without more, that the Examiner has acknowledged that
claim 60, as amended, is novel and/or non-obvious in view of the cited
references. Neither a finding of novelty nor a non-obviousness
determination automatically leads to the conclusion that the claimed subject
matter is patent eligible. Although the second step in the Mayo/Alice
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for “an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Alice Corp., 573 U.S. at 217–18 (citation
omitted). “Groundbreaking, innovative, or even brilliant discovery does not
by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious
claim directed to a purely abstract idea is, nonetheless, patent ineligible. See
Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188–89
(1981) (“The ‘novelty’ of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter.”).
For the foregoing reasons, we are not persuaded that the Board’s
previous decision is the “law of the case” and, thereby, controls the
prosecution of this application. As such, we are not persuaded that the
Examiner erred in reentering a § 101 rejection of claims 60–63. Because
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Appellant has presented no further arguments, we sustain the Examiner’s
rejection.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
60–63 101 Eligibility 60–63
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).

AFFIRMED