Ex Parte Anderson et al

Patent Trial and Appeal Board

Dec 28, 2016

11731809 (P.T.A.B. Dec. 28, 2016)

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.
11/731,809 03/30/2007 John R. Anderson JR. MTC 54582.2 (54582)C/US 7745
45738 7590 12/30/2016
SENNIGER POWERS LLP (MTC)
100 NORTH BROADWAY
17TH FLOOR
ST LOUIS, MO 63102
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
12/30/2016 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):
uspatents @ senniger.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN R. ANDERSON JR., JOHN H. JANSEN,
HARRISON R. HAKES, BARRY K. GOODWIN,
NICHOLAS E. PIGGOTT, and DAVID J. RHYLANDER
Appeal 2014-008410
Application 11/731,8091
Technology Center 3600
Before ANTON W. FETTING, KEVIN W. CHERRY, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-13 and 16-26. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is Monsanto
Technology, LLC. (Appeal Br. 1.)
Appeal 2014-008410
Application 11/731,809
CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates to “methods and financial
products that properly evaluate the risks associated with producing
transgenic crops wherein the transgenic crop exhibits at least one trait as a
result of having at least one transgene.” (Replacement Spec. 4.)
Claims 1 and 16 are the independent claims on appeal. Claim 1 is
representative. It recites (emphasis added):
1. A method of calculating a rate for a transgenic crop
insurance policy purchased by a transgenic crop producer
implemented on a computer programmed to calculate rates for
transgenic crop insurance policies, wherein the transgenic crop
comprises a trait as a result of having at least one transgene, the
method comprising the steps of:
retrieving yield data by a computer from side-by-side field
trials for the transgenic crop and a corresponding conventional,
non-transgenic crop;
comparing the yield data for the transgenic crop to
preexisting yield data for the conventional, non-transgenic crop
by the computer to derive a distribution of differences between
the transgenic crop yields and the conventional, non- transgenic
crop yields, wherein the preexisting yield data for the
conventional, non-transgenic crop is actual production history
(APH) yield data or existing Risk Management Agency (RMA)
yield data;
generating a risk correlation between the conventional,
non-transgenic crop yields and the distribution of yield
differences by the computer;
simulating a yield distribution for the transgenic crop by
the computer to create a simulated yield distribution for the
transgenic crop based on (a) the risk correlation, (b) the
distribution of yield differences, and (c) a yield distribution for
the conventional, nontransgenic crop; and
calculating the rate for the transgenic crop insurance
policy based on the yield distribution for the transgenic crop,
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Application 11/731,809
where the insurance rate for the transgenic crop is charged to the
transgenic crop producer.
REJECTIONS
Claims 1-13 and 16-26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over McComb (US 2006/0287896 Al, pub. Dec. 21, 2006),
Green (US 2005/0125260 Al, pub. June 9, 2005), and McComb
(US 2007/0174095 Al, pub. July 26, 2007).
ANALYSIS
New ground of rejection, § 112, second paragraph
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION against claims 1-13 under § 112, second
paragraph,2 as being indefinite for failure to particularly point out and
distinctly claim the subject matter which Appellants regard as the invention.
“As the statutory language of ‘particularity]’ and ‘distinctness]’
indicates, claims are required to be cast in clear - as opposed to ambiguous,
vague, indefinite - terms.” In re Packard, 751 F.3d 1307, 1313 (Fed. Cir.
2014). “It is the applicants’ burden to precisely define the invention, not the
PTO’s.” In re Morris, 127 F.3d 1048, 1056 (Fed. Cir. 1997).
In relevant part, claim 1 recites:
retrieving yield data by a computer from side-by-side field
trials for the transgenic crop and a corresponding conventional,
non-transgenic crop;
comparing the yield data for the transgenic crop to
preexisting yield data for the conventional, non-transgenic crop
by the computer to derive a distribution of differences between
2 Now 35 U.S.C. § 112(b).
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the transgenic crop yields and the conventional, non- transgenic
crop yields, wherein the preexisting yield data for the
conventional, non-transgenic crop is actual production history
(APH) yield data or existing Risk Management Agency (RMA)
yield data.
In other words, claim 1 refers to at least three different types of crop
yield data: 1) retrieved yield data for the transgenic crop, 2) retrieved yield
data for the conventional, non-transgenic crop, and 3) preexisting yield data
for the conventional, non-transgenic crop.
In the “comparing” step, claim 1 requires comparing the retrieved
yield data for the transgenic crop to preexisting yield data for the
conventional, non-transgenic crop. Claim 1 then uses this comparison to
derive a distribution of differences between the retrieved transgenic crop
yields and “the conventional, non-transgenic crop yields.” Note that with
regard to deriving the distribution of differences, claim 1 recites “the
conventional, non-transgenic crop yields” and not “preexisting yield data for
the conventional, non-transgenic crop.” However, it is unclear how
comparing retrieved yield data for the transgenic crop to preexisting yield
data for the conventional, non-transgenic crop would result in a distribution
of differences between retrieved yield data for the transgenic crop and
retrieved yield data for the conventional, non-transgenic crop.
If we were to construe the term “conventional, non-transgenic crop
yields” as referring to the preexisting yield data for conventional, non-
transgenic crops, the comparing step would be clearer. However, claim 1
also recites “generating a risk correlation between the conventional, non-
transgenic crop yields and the distribution of yield differences by the
computer,” which, by omitting the term “preexisting,” suggests that the risk
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correlation is between the retrieved conventional, non-transgenic crop yields
and the distribution of yield differences. Thus, it is unclear from a plain
reading of the claim whether the term “conventional, non-transgenic crop
yields” refers to retrieved or preexisting conventional, non-transgenic crop
yield data.
To aid us in construing the claim term “conventional, non-transgenic
crop yields,” we look to the Specification and Appellants’ mapping of the
Specification to claim 1. (See Appeal Br. 5-6.) Appellants, referencing the
Specification as originally filed3 (hereinafter “Spec.” or “Specification”),
map the claim limitation “retrieving yield data by a computer from side-by-
side field trials for the transgenic crop and a corresponding conventional,
non-transgenic crop” to, inter alia, page 23, lines 3-21 and page 24, lines 1-
8 of the Specification. (Id. at 5.) Additionally, Appellants map the claim
limitation “generating a risk correlation between the conventional, non-
transgenic crop yields and the distribution of yield differences by the
computer” to, inter alia, page 23, lines 3-21 and page 24, lines 9-13 of the
Specification. (Id. at 6.)
In relevant part, the Specification “defme[s] jvNT to be the traditional
non-traited variety yield for a given acre of com in year t. Likewise, define
j-/BT as the genetically modified (traited) variety yield. Now, let d, =yFI -
y/NT be the observed difference between the traited and non-traited yields for
a given side-by-side comparison in year t.” (Spec. 23,11. 5-8.) In other
words, dt represents the difference between retrieved yield data for the
3 To avoid citation confusion, we also refer to the originally filed
Specification, as cited in the Appeal Brief, rather than the replacement
Specification (filed November 16, 2009). The cited portions appear in both.
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transgenic crop and retrieved yield data for the conventional, non-transgenic
crop. “Applied in the manner of this invention, p = Corr(dt, j'/NT) becomes a
‘risk correlation.’” (Id. at 23,11. 17-18.) This suggests that the risk
correlation is calculated using retrieved, yield data for the conventional,
non-transgenic crop.
The Specification also discloses that “[calculation of risk
correlation 11 may be performed on a computer means. . . . Data input into
the computer system may include preexisting data, including yield
distribution data for a corresponding conventional crop 13, APH yield data
14 for the conventional crop, and existing Risk Management Agency (RMA)
rates 15 for the conventional crop.” (Id. at 24,11. 9-13.) This suggests that
the risk correlation may also be calculated using preexisting, rather than
retrieved, yield data for the conventional, non-transgenic crop.
The Specification further discloses that “[s]tep 20 measures the
distributional properties of the observed traited versus non-traited yield
differences.” (Id. at 24,11. 13-14.) This further suggests that the
distributional properties are measured using the observed/retrieved non-
traited yield differences. However, because this statement immediately
follows the discussion of using preexisting data, it might also reasonably be
construed as suggesting using preexisting non-traited yield differences. (See
id. at 24,11. 10-14.)
In short, the claim term “conventional, non-transgenic crop yields,” as
used in claim 1, is ambiguous. Thus, claim 1 fails to particularly point out
and distinctly claim the subject matter which Appellants regard as the
invention. Claims 2-13 depend from claim 1. Thus, we also find that
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claims 2-13 fail to particularly point out and distinctly claim the subject
matter which Appellants regard as the invention.
The §103 rejection of claims 1—13
Claim 1 recites: “comparing the yield data for the transgenic crop to
preexisting yield data for the conventional, non-transgenic crop by the
computer to derive a distribution of differences between the transgenic crop
yields and the conventional, non-transgenic crop yields.”
Appellants argue that the “claimed method does not require yield
history information for the crop to be insured,” i.e., that the claimed method
does not require preexisting yield data for the transgenic crop. (See Appeal
Br. 13.)
The Examiner finds that Green teaches “comparing the preexisting
yield data for the transgenic crop to yield data for the conventional, non-
transgenic crops by the computer to derive a distribution of differences
between the transgenic crop yields and the conventional, non- transgenic
crop yields.” (Final Action 4, emphasis added, citing Green HH 40, 41.4)
But paragraphs 40 and 41 of Green disclose comparing retrieved yield
data for a crop subject to a particular best management practice (BMP) to
retrieved yield data for a crop not subject to that BMP. Moreover, the
Examiner’s finding does not make clear if the Examiner’s reference to “the
conventional, non-transgenic crop yields” refers to retrieved or preexisting
yield values. Even assuming that the cited portions of Green disclose
4 The Final Action cites to “[T|40] [HI]” of Green. (Final Action 4, brackets
in original.) However, in view of the content of paragraphs 1 and 41 of
Green, we treat the reference to paragraph 1, rather than paragraph 41, as a
typographical error.
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Application 11/731,809
comparing preexisting transgenic crop yield data to either retrieved or
preexisting non-transgenic crop yield data, the Examiner does not explain
how that would have made obvious the claimed comparing of retrieved
transgenic yield data to preexisting non-transgenic crop yield data.
Therefore, we are persuaded that the Examiner erred in rejecting
claim 1 under § 103. Claims 2-13 depend from claim 1 and the rejection
relies on the same analysis we found insufficient as to claim 1. (Final
Action 5-10.) Thus, we are also persuaded that the Examiner erred in
rejecting claims 2-13 under § 103.
The §103 rejection of claim 16 26
Appellants state that “[t]he rejection of claims 16-26 is not being
appealed.” (Appeal Br. 2.) In the Claims Appendix of the Appeal Brief,
claims 16-26 are listed as “(Cancelled).” (Id. at 27-28.) However,
Appellants do not indicate, and the record does not reflect, an amendment to
cancel claims 16-26 or that the Examiner has cancelled claims 16-26.
Therefore, we treat claims 16-26 as rejected and arguments and evidence
waived for purposes of the appeal with regard to claims 16-26. (See MPEP
§ 1205.02.)
New ground of rejection, f 101
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW
GROUND OF REJECTION against claims 1-13 and 16-26 under 35 U.S.C
§ 101.
Subsequent to the filing of briefs in this appeal, the Supreme Court
decided Alice Corp. Pty Ltd. V. CLS Bank Inti, 134 S. Ct. 2347 (2014).
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Alice applies a two-part framework, earlier set out in Mayo Collaborative
Servs. V. Prometheus Labs., Inc., 132 S. Ct. 1289 (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., 134 S. Ct. at 2355.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
part of the framework is applied to determine if “the elements of the
claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing
Mayo, 132 S. Ct. at 1294, 1298). Therefore, we must first determine
whether the claims at issue are directed to a patent-ineligible concept.
Although the Court in Alice did not elaborate on how it made its
finding as to what the claims were directed, we find that this case’s claims
themselves and the Specification provide enough information to inform one
as to what they are directed.
The claimed invention relates to calculating a rate for a crop insurance
policy. The steps in claim 1 include retrieving certain data, comparing the
data, determining risk and a yield distribution, and calculating an insurance
rate. Claim 16 contains similar language. In short, the claims are directed to
collecting and analyzing information. We treat collecting information as
within the realm of abstract ideas. See Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Moreover, we treat “analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
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abstract-idea category.” Id. at 1354. Additionally, the Federal Circuit has
found claims directed to a stable value insurance policy to be directed to an
ineligible abstract idea. See Bancorp Services, L.L. C. v. Sun Life Assurance
Co. of Canada, 687 F.3d 1266 (Fed. Cir. 2012). In view of the above, we
conclude that the claims at issue are directed to a patent-ineligible concept.
We now apply the second part of the framework to determine if “the
elements of the claim . . . contain[] an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice Corp., 134 S. Ct. at 2357 (citing Mayo, 132 S. Ct. at 1294, 1298).
The claims do not provide anything significant to differentiate the
claimed process from ordinary mental steps. See Electric Power Group, 830
F.3dat 1355. The claims “do not require an arguably inventive set of
components or methods, such as measurement devices or techniques.” Id.
The introduction of a computer into the claims does not alter the analysis at
step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply if” is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our §101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional featur[e]” that provides any
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Application 11/731,809
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Alice Corp., 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Id. at 2359. They do not. Taking the claim elements
separately, the function performed by the computer at each step of the
process is purely conventional and adds no inventive concept. Nor do the
claims offer detail about the computer system. In short, the claim
steps/limitations do no more than require a generic computer to perform
generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ claims simply
recite the concept of retrieving data and processing the data through a
mathematical algorithm to calculate a rate for the crop insurance policy. The
claims do not, for example, purport to improve the functioning of the
computer itself. Nor do they effect an improvement in any other technology
or technical field. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea of
calculating a rate for a crop insurance policy using some unspecified,
generic computer. That is not enough to transform an abstract idea into a
patent-eligible invention. See id. at 2360; see also Electric Power Group,
830 F.3d at 1353-56.
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DECISION
The Examiner’s rejection of claims 1-13 under 35 U.S.C. § 103(a) is
reversed.
The Examiner’s rejection of claims 16-26 under 35 U.S.C. § 103(a) is
summarily affirmed.
We enter a NEW GROUND OF REJECTION of claims 1-13 under
35 U.S.C. § 112, second paragraph.
We enter a NEW GROUND OF REJECTION of claims 1-13 and 16-
26 under 35 U.S.C. § 101.
This decision contains NEW GROUNDS OF REJECTION pursuant
to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that, “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) further provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THIS DECISION, must exercise one of
the following two options with respect to the new grounds 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.
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).
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AFFIRMED-IN-PART: 37 C.F.R. § 41,50(40
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