Ex Parte Block et al

Patent Trial and Appeal Board

Nov 7, 2018

12511302 (P.T.A.B. Nov. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/511,302 07/29/2009
98424 7590 11/08/2018
Otterstedt, Ellenbogen & Kammer, LLP
P.O. Box 381
Cos Cob, CT 06807-0381
FIRST NAMED INVENTOR
Jerome N. Block
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.
1065-02 3525
EXAMINER
NGUYEN, TAND
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
11/08/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEROME N. BLOCK, ULF HANSSON, and
NICHOLAS Z. HEGEDUS
Appeal2017-007129
Application 12/511,302 1
Technology Center 3600
Before JUSTIN BUSCH, JENNIFER L. McKEOWN, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-13, 15-19, 24, 26, 27, 30, and 31, which are all the
claims pending and rejected in the application. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm-in-part.
1 Appellants identify GREENTIRE ENERGY LLC as the real party in
interest. Appeal Br. 3.
Appeal2017-007129
Application 12/511,302
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
locating and operating industrial plants, and more particularly to locating
and operating gasification plants. See Spec. 1.
Principles of the present invention provide techniques for
locating and operating a gasification plant having
predominately scrap tire rubber as feedstock. In one aspect, an
exemplary method (which can be at least partially computer-
implemented) for locating and operating a gasification plant
employing predominately tire-derived fuel as a feedstock
includes the steps of identifying a parcel of land on which to
site the plant, the parcel of land being located such that at least
about 3,500,000 scrap tires per year are available for
substantially regular and substantially continuous delivery to
the plant, at a predetermined adequate tipping fee; locating the
plant on the parcel of land; and selling at least one of synthesis
gas, electricity, and steam produced by the plant.
Spec. 1. Claim 1 is exemplary:
1. A method for locating and operating a gasification
plant employing predominately tire-derived fuel as a feedstock,
said method comprising the steps of:
identifying a parcel of land on which to site said plant,
said parcel of land being located such that at least about
3,500,000 scrap tires per year are available for substantially
regular and substantially continuous delivery to said plant, at a
predetermined adequate tipping fee;
locating said plant on said parcel of land;
operating said plant on said parcel of land by:
shredding at least a portion of said 3,500,000 scrap
tires into pellets; and
gasifying said pellets to produce synthesis gas, by:
introducing said pellets into an updraft,
fixed-bed gasifier; and
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introducing into said updraft, fixed-bed
gasifier, adjacent said pellets, at least one of air,
oxygen, and steam;
flowing said synthesis gas in an updraft to a gas
exit of said updraft, fixed-bed gasifier, during operation
of said updraft, fixed-bed gasifier; and
selling at least one of said synthesis gas, electricity
produced by combusting said synthesis gas, and steam
produced by combusting said synthesis gas;
wherein said step of introducing said pellets into said
updraft, fixed-bed gasifier comprises introducing said pellets at
a rate of from about 7,990 lbs/hour to about 17,123 lbs/hour;
and
wherein said step of introducing said at least one of air,
oxygen, and steam into said updraft, fixed-bed gasifier
comprises introducing air in sub-stoichiometric amounts.
References and Rejections2
Claims 1-13, 15-19, 24, 26, 27, 30, and 31 stand rejected under 35
U.S.C. § 101 because they are directed to patent-ineligible subject matter.
Final Act. 4--19.
Claims 1-12, 26, 27, and 303 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over "Feasibility Study for a Small-Scale
Biomass Project for the Warrenton, VA Area", November 2, 2007
("Warrenton"), "Nexterra's Gasification Technology", July 28, 2009
2 Throughout this opinion, we refer to the (1) Final Rejection dated February
3, 2016 ("Final Act."); (2) Appeal Brief dated December 5, 2016 ("Appeal
Br."); (3) Examiner's Answer dated February 2, 2017 ("Ans."); and (4)
Reply Brief dated April 3, 2017 ("Reply Br.").
3 The Final Action's heading omits claim 3, which appears to be a
typographical error. See Final Act. 21, 39-40.
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Application 12/511,302
("Nexterra"), and Prentice III (US 7,028,478 B2, pub. Apr. 18, 2006). Final
Act. 21--40.
Claims 13, 15-19, 24, and 31 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Warrenton, Nexterra, Prentice III, and
Knopp (US 2005/0031197 Al, pub. Feb. 10, 2005). Final Act. 40--44.
Alternatively, Claims 18 and 24 stand rejected under pre-AIA 35
U.S.C. § I03(a) as being unpatentable over Warrenton, Nexterra, Prentice
III, Knopp, and Kline (US 2005/0080520 Al, pub. Apr. 14, 2005). Final
Act. 44--45.
Claim 7 stands rejected under pre-AIA 35 U.S.C. § I03(a) as being
unpatentable over Warrenton, Nexterra, Prentice III, and Kline. Final Act.
44--45.
PRINCIPLES OF LAW
"[W]hen the prior art teaches away from combining certain known
elements, discovery of a successful means of combining them is more likely
to be nonobvious." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007)
( citation omitted).
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Kahn, 441 F.3d 977, 990
(Fed. Cir. 2006) (citation omitted).
The "mere disclosure of alternative designs does not teach away" and
"just because better alternatives exist in the prior art does not mean that an
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inferior combination is inapt for obviousness purposes." In re Mouttet, 686
F.3d 1322, 1334 (Fed. Cir. 2012) (citations omitted).
Although a reference that teaches away is a significant factor to
be considered in determining unobviousness, the nature of the
teaching is highly relevant, and must be weighed in substance.
A known or obvious composition does not become patentable
simply because it has been described as somewhat inferior to
some other product for the same use.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
"The prior art's mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed in the ... application." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004).
ANALYSIS
35 us.c. § 101
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 4--19; Ans. 2-
5. In particular, the Examiner determines "claim 1 recite steps for locating
and operating a gasification plant employing predominately tire-derived fuel
as a feedstock or in general 'a project planning"' (Final Act. 9) and
constitutes:
a fundamental economic/business practice ....
Conducting a feasibility study for a small scale
waste/scrap material project for a local area and operation of the
waste heat boiler, wherein the generated products such as
steam, electricity, and gas are for sale, is fundamental economic
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practice. See the cited reference, "Feasibility Study for a Small-
Scale Biomass Project for the Warrenton, VA Area", by
Antares Group Incorporated, November 2, 2007. The selection
of different types of was[te] material, scrap tires, and different
types of waste heat boiler, is within the skill of the artisan.
This technique was practiced prior to the earliest
available filing date as evidenced by ... the cited reference[ s]
The concept of forming a project for a feasibility study
for a small scale waste/scrap material project for a local area
and operation of the waste heat boiler is an economic practice
long prevalent in our system of commerce and squarely within
the realm of abstract ideas. As for the operation of the waste
heat boiler, i.e. updraft, fixed-bed gasifier, these steps are
conventional and well known when burning scrap tires pellets,
as taught by NEXTERRA article.
Final Act. 9--10 ( original emphases omitted).
Alternatively, the Examiner determines claim 1 is directed to
"business process management" (Final Act. 10) and constitutes "a
fundamental economic/business practice, or ... a method of
organizing human activities." Final Act. 10-12. The Examiner
determines the claims do not identify an inventive concept to
transform the nature of the claims into a patent-eligible application.
See Final Act. 13-19.
Appellants argue the Examiner's analysis under Alice step one
is incorrect, as the Examiner ignores claim elements and fails to
consider the claims as a whole. See Appeal Br. 18-20; Reply Br. 26-
32. Appellants contend the claims are also patent eligible under Alice
step two, because they recite specific technology improvements. See
Appeal Br. 20-21; Reply Br. 32-33.
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For the reasons stated below, we agree with Appellants that the
Examiner erred in determining claim 1 is directed to patent-ineligible subject
matter. See Appeal Br. 18-22; Reply Br. 26-33.
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. That provision "'contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable."' Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354
(2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)). According to the Supreme Court:
[W]e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts .... If so, we then ask,
"[ w ]hat else is there in the claims before us?" ... To answer
that question, we consider the elements of each claim both
individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application. . . . We have
described step two of this analysis as a search for an "'inventive
concept"' -i.e., 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., 134 S. Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
Alice step-two inquiry as looking more precisely at what the claim elements
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add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Turning to step one of the Alice analysis, the Examiner is correct that
the preamble of claim 1 recites a method for "locating and operating a
gasification plant employing predominately tire-derived fuel as a feedstock."
See Final Act. 8; Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC,
874 F.3d 1329, 1340 (Fed. Cir. 2017) ("we see no error here in the district
court citing to the preamble in its review of whether the claims are directed
to an abstract idea").
However, the Examiner erred in concluding claim 1 is directed to
"project planning" or "business process management" and, therefore,
constitutes a fundamental economic or business practice, or a method of
organizing human activities (Final Act. 9-12). The Examiner erred because
"[i]n determining the eligibility of respondents' claimed process for patent
protection under§ 101, their claims must be considered as a whole."
Diamond v. Diehr, IOI S. Ct. 1048, 1057-58 (1981); see also McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (the
question is whether the claims as a whole "focus on a specific means or
method that improves the relevant technology or are instead directed to a
result or effect that itself is the abstract idea and merely invoke generic
processes and machinery").
Although claim 1 involves the abstract idea of "identifying a parcel of
land ... locating said plant on said parcel of land" ( claim 1 ), the Federal
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Circuit explains the "directed to" inquiry is not simply asking whether the
claims involve a patent-ineligible concept:
The "directed to" inquiry [ ] cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical
products and actions involves a law of nature and/or natural
phenomenon-after all, they take place in the physical world.
See Mayo, 132 S.Ct. at 1293 ("For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas."). Rather, the "directed to"
inquiry applies a stage-one filter to claims, considered in light
of the specification, based on whether "their character as a
whole is directed to excluded subject matter."
Enfish, 822 F.3d at 1335.
Considering claim 1 as a whole, we disagree with the Examiner's
determination that claim 1 is directed to an abstract idea (Final Act. 9--12).
Claim 1 recites locating a gasification plant, operating the plant, and
selling products produced from the plant. See claim 1. In particular,
operating the plant includes detailed steps of shredding scrap tires into
pellets, gasifying the pellets to produce synthesis gas, and flowing the
synthesis gas. See claim 1.
Therefore, claim 1 is directed to locating and operating a gasification
plant employing a particular chemical process, which transforms scrap ties
into synthesis gas. Our determination is supported by the Specification,
which describes rising interests in alternative sources of energy and seeking
proper methods of disposing waste materials ( such as scrap ties) to protect
the environment. See Spec. 1. The Specification describes the
transformation process in detail:
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the United States generates far more scrap tires than it can
dispose of, and this trend shows no signs of abating. To the
extent scrap tires generated in the United States are disposed of
at all, the disposal techniques used are not environmentally
sound (e.g., incineration, spreading the rubber across a wider
surface area of the Earth, selling scrap tires for use and/ or
disposal in Third World countries), and none of these
techniques (apart from incineration) takes advantage of the tire
rubber's substantial, untapped BTU value.
Aspects of the invention provide techniques for locating
and operating a plant for disposal of scrap tires in an
environmentally "clean" and sound manner while recovering
the tires' untapped energy, via a gasification plant using
predominantly tire rubber as its feedstock. One or more
embodiments of the invention provide a method for locating
and operating a plant which carries out the thermo-chemical
conversion, by gasification, of tire rubber feedstock into
Syngas. The Syngas itself can, for example, be sold, burned to
fire a boiler to make steam for sale, burned in a gas turbine to
make electricity for sale, and/or burned to fire a boiler to make
steam for a steam turbine to generate electricity for sale, and to
generate associated, saleable renewable energy credits. As
noted elsewhere herein, in one or more embodiments,
predominately ( that is, more than 50%) tire rubber is used as
feedstock, preferably at least 90% tire rubber as feedstock,
more preferably 95-100% tire rubber as feedstock, and most
preferably only tire rubber (together with those trace impurities
commonly found in pelletized tires).
Spec. 9-10.
As a result, this case is similar to Diehr. In that case, the U.S.
Supreme Court determines an industrial process of transforming uncured
synthetic rubber into cured rubber is patent eligible:
The respondents' claims were not directed to a mathematical
algorithm or an improved method of calculation but rather
recited an improved process for molding rubber articles by
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solving a practical problem which had risen in the molding of
rubber products.
[A] physical and chemical process for molding precision
synthetic rubber products falls within the § 101 categories of
possibly patentable subject matter. That respondents' claims
involve the transformation of an article, in this case raw,
uncured synthetic rubber, into a different state or thing cannot
be disputed. The respondents' claims describe in detail a step-
by-step method for accomplishing such, beginning with the
loading of a mold with raw, uncured rubber and ending with the
eventual opening of the press at the conclusion of the cure.
Industrial processes such as this are the types which have
historically been eligible to receive the protection of our patent
laws.
Diehr, IOI S. Ct. at 1054--1055.
Similar to the claims of Diehr, claim 1 recites an improved process for
operating a gasification plant employing predominately tire-derived fuel by
solving a practical problem that occurred in operating a gasification plant.
See Diehr, IOI S. Ct. at 1055. Similar to the claims of Diehr, claim 1
"involve[ s] the transformation of' scrap tires into synthesis gas-a different
thing. Diehr, IOI S. Ct. at 1055. Similar to the claims of Diehr, claim 1
describes in detail a step-by-step method for accomplishing the
transformation, beginning with the shredding of the scrap ties and ending
with synthesis gas at the conclusion of the operation. See Diehr, IO 1 S. Ct.
at 105 5. That kind of industrial process has "historically been eligible to
receive the protection of our patent laws." Diehr, IOI S.Ct. at 1055.
Therefore, similar to the claims of Diehr, claim 1 is patent eligible
because it is not directed to an abstract idea. See Diehr, IOI S. Ct. at 1055.
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For similar reasons, claims 2-13, 15-19, 24, 26, 27, 30, and 31, which
depend on claim 1, are also patent eligible because they are not directed to
an abstract idea.
Because we conclude claims 1-13, 15-19, 24, 26, 27, 30, and 31 are
not directed to an abstract idea under step one of the Alice analysis, we do
not need to reach Appellants' arguments about step two of the Alice analysis.
See Enfzsh, 822 F.3d at 1339.
Accordingly, we reverse the Examiner's rejection of claim 1-13, 15-
19, 24, 26, 27, 30, and 31 under 35 U.S.C. § 101, as the Examiner fails to
provide sufficient basis for the rejection.
35 USC§ 103
Claims 1-12. 26. 27. and 30
On this record, the Examiner did not err in rejecting claim 1.
We disagree with Appellants' arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
appeal is taken (Final Act. 21-34) and (ii) the Answer (Ans. 6-7) to the
extent they are consistent with our analysis below. 4
4 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 41.41(b)(2).
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I
Appellants contend the Examiner erred in determining the cited
references collectively teach claim 1. See Appeal Br. 6-11; Reply Br. 6-14,
16. In particular, Appellants argue Prentice III teaches away from claim 1
because "use of air is expressly required by the unambiguous literal
language of the claim" and "there is overwhelming teaching away from the
use of air within the four comers of Prentice III." Appeal Br. 7 ( original
emphases omitted). Appellants cite eight extensive excerpts of Prentice III
and contend, based on such excerpts, "Prentice III repeatedly criticizes,
discredits, and discourages use of air." Appeal Br. 7.
Appellants have not persuaded us of error.
Claim 1 recites air in these limitations: "introducing into said updraft,
fixed-bed gasifier, adjacent said pellets, at least one of air, oxygen, and
steam" ("Introducing Limitation") and "wherein said step of introducing said
at least one of air, oxygen, and steam into said updraft, fixed-bed gasifier
comprises introducing air in sub-stoichiometric amounts" ("Wherein
Limitation").
The Examiner finds the primary reference Warrenton teaches the
Introducing Limitation. See Final Act. 27. The Examiner further finds the
combination of Warrenton and Nexterra inherently teaches the Wherein
Limitation. See Final Act. 28-30. Appellants do not dispute those findings.
The Examiner cites Prentice III as a secondary reference for teaching
"shredding at least a portion of said 3,500,000 scrap tires into pellets." See
Final Act. 32-33. Appellants do not dispute that finding. The Examiner
modifies Warrenton's method to include Nexterra's and Prentice Ill's
features. See Final Act. 21-33. The modification includes Prentice Ill's
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teaching of shredding at least a portion of said 3,500,000 scrap tires into
pellets, but no other teachings of Prentice III. See Final Act. 21-33.
Appellants' contentions about Prentice III are unpersuasive. In
particular, Appellants do not contend-let alone show-Prentice III
criticizes or discourages using air for the shredding operation, which is the
only Prentice III feature used by the combination. Further, regardless of
whether Prentice III teaches away from using air in its own operation, that
operation is not included in the Examiner's proposed combination.
Therefore, Appellants' teaching away argument based on Prentice III is
unpersuasive.
II
Appellants contend their teaching away argument ( discussed above) is
"strongly bolstered" by the expert declaration of Dr. George Mallan dated
February 6, 2014 ("Declaration" or "Deel."). Appeal Br. 12; Reply Br. 15.
We disagree. Appellants acknowledge the Declaration's assertions
about Bishop (US 2005/0000162 Al, pub. Jan. 6, 2005) are no longer
relevant, as the Examiner no longer cites that reference for the rejection. See
Appeal Br. 12.
We find unpersuasive the Declaration's assertion that:
an attempt to combine Prentice III ... and "Nexterra's
Gasification Technology" to obtain the invention claimed in
Claim 1 of the above-identified US Patent Application, as
pending after the Amendment filed in response thereto on
December 19, 2013, would change the principle of operation of
Prentice III ( combustion to produce steam only - paragraph 8,
supra and Prentice III abstract).
Deel 3.
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Appellants have not shown the above assertion about claim 1 is
applicable, as the assertion is directed to a claim from 2013-nearly
five years ago. And Appellants have not compared the outdated claim
1 with the current claim 1 to show they are identical. In any event, the
Declaration's assertion that the combination "would change the
principle of operation of Prentice III" is not directed to the Examiner's
specific combination. As discussed above, the Examiner does not use
Prentice III as the primary reference, and does not modify Prentice
Ill's system for the proposed combination.
Likewise, we find unpersuasive the Declaration's assertion that:
Prentice III teaches away from any combination with ...
'Nexterra's Gasification Technology" to obtain the invention
claimed in Claim 29 of the above-identified US Patent
Application, as pending after the Amendment filed in response
thereto on December 19, 2013, since Prentice III teaches
combustion using an oxidizer other than air.
Deel. 3--4. Claim 29 is not before us, as it has been cancelled. See Final
Act. 2. In any event, the above argument is unpersuasive. As discussed
above, the Examiner modifies Warrenton's method (as modified by
Nexterra) to include Prentice Ill's sole feature of the shredding technique,
and Appellants do not contend Prentice III criticizes or discourages using air
for the shredding technique. Further, regardless of whether Prentice III
teaches away from using air in its own operation, that operation is not
included in the Examiner's proposed combination.
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III
Appellants contend:
Even if the references are combined as proposed by the
Examiner, at a minimum, they fail to teach or suggest
"identifying a parcel of land on which to site said plant, said
parcel of land being located such that at least about 3,500,000
scrap tires per year are available for substantially regular and
substantially continuous delivery to said plant, at a
predetermined adequate tipping fee." At pages 22-25 of the
Final Office Action, the Examiner relies on passages of
WARRENTON reproduced in the Office Action. However, it is
respectfully submitted that these passages are best understood
not as directed to identifying a parcel of land within the
meaning of the cited passage of Claim 1. Rather, it is
respectfully submitted that these passages, in essence, already
assume that the plant will be built near Warrenton, VA and
merely survey what amount of tires at what tipping fee are
available near that town; they do not fairly teach or suggest the
minimum desired number of scrap tires per year and tipping fee
for economic operation when seeking to locate a plant with a
"blank slate." Compare passages of WARRENTON
reproduced on Office Action pages 23-25 with page 11 of the
present specification.
Appeal Br. 12-13; see also Reply Br. 15-16.
Appellants have not persuaded us of error. It is well established that
during examination, claims are given their broadest reasonable interpretation
consistent with the specification and should be read in light of the
specification as it would be interpreted by one of ordinary skill in the art, but
without importing limitations from the specification. See In re Am. Acad. of
Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted);
SuperGuide Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir.
2004 ). Because page 11 of the Specification merely provides non-limiting,
exemplary description of the disputed limitation, we decline to import
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limitations from the Specification into the disputed claim limitation.
Therefore, Appellants' statement about comparing the cited prior art
excerpts with "page 11 of the present specification" (Appeal Br. 12-13;
Reply Br. Reply Br. 15-16) is unhelpful.
Further, Appellants' assertion about "seeking to locate a plant with a
'blank slate[]"' (Appeal Br. 12) is not commensurate with the scope of the
claim, as Appellants have not shown claim 1 requires such language.
Because the claim limitation "identifying a parcel of land" is broadly
worded, we agree with the Examiner that under the broadest reasonable
interpretation of that term, the cited Warrenton excerpts teach that limitation.
See Final Act. 22-25; Warrenton 1 (describing identifying a parcel of land in
Warrenton, Virginia).
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of independent claim 1.
We also sustain the Examiner's rejection of corresponding dependent
claims 2-12, 26, 27, and 30 (including the alternative rejection of claim 7),
as Appellants do not advance separate substantive arguments about those
claims.
Claims 13, 15-19, 24, and 31 5
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in determining the cited portions of
5 Appellants raise additional arguments about this group of claims. Because
the identified issue is dispositive of the appeal with respect to this group of
claims, we do not reach the additional arguments.
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Warrenton teach "generating a visual representation of a geographic region
of interest, wherein said visual representation includes at least one window
adjacent at least one tire supplier location," as recited in claim 13 ( emphasis
added). See Appeal Br. Br. 14--16; Reply Br. 17.
Specifically, we agree with Appellants that the Examiner has not
adequately mapped the italicized limitation, as the Examiner's rejection
maps "generating a visual representation of a geographic region of interest,
wherein said visual representation includes at least one window adjacent
said at least interest feature" ( emphasis added) instead. See Appeal Br. 14--
16. And the Examiner fails to explain how the "interest feature" is
equivalent to, or at least teaches or suggests a tire supplier location.
Further, we have reviewed the Knopp excerpts cited by the Examiner,
and absent further explanation by the Examiner, we do not see how they
teach "generating a visual representation of a geographic region of interest,
wherein said visual representation includes at least one window adjacent at
least one tire supplier location," as required by claim 13 ( emphasis added).
Because the Examiner fails to provide sufficient evidence or
explanation to support the rejection, we are constrained by the record to
reverse the Examiner's rejection of claim 13.
We also reverse the Examiner's rejection of dependent claims 15-19,
24, and 31, which depend on claim 13. Although the Examiner cites an
additional reference for rejecting dependent claims 18 and 24 under an
alternative ground of rejection, the Examiner has not shown the additional
reference overcomes the deficiency discussed above in the rejection of claim
13.
18
Appeal2017-007129
Application 12/511,302
DECISION
We reverse the Examiner's decision rejecting claims 1-13, 15-19, 24,
26, 27, 30, and 31 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1-12, 26, 27, and
30 under 35 U.S.C. § 103.
We reverse the Examiner's decision rejecting claims 13, 15-19, 24,
and 31 under 35 U.S.C. § 103.
Because we affirm at least one ground of rejection with respect to
claims 1-12, 26, 27, and 30, we affirm the Examiner's decision rejecting
claims 1-12, 26, 27, and 30. See 37 C.F.R. § 4I.50(a)(l).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See 37
C.F.R. § 4I.50(f).
AFFIRMED-IN-PART
19