Ex Parte Bowers et al

Patent Trial and Appeal Board

Jun 25, 2014

12006804 (P.T.A.B. Jun. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEFFREY A. BOWERS, KENNETH G. CALDEIRA,
ALISTAIR K. CHAN, WILLIAM H. GATES, III, RODERICK A. HYDE,
MURIEL Y. ISHIKAWA, JORDIN T. KARE, JOHN LATHAM,
NATHAN P. MYHRVOLD, STEPHEN H. SALTER,
CLARENCE T. TEGREENE, and LOWELL L. WOOD, JR.
____________

Appeal 2011-013593
Application 12/006,804
Technology Center 3600
____________

Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 2, 6–10, 15, 16, 21–26, 31–35, 39–44, 49–54, 58–62,
and 67–69 which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).

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SUMMARY OF THE DECISION
We REVERSE.

THE INVENTION
The Appellants’ claimed invention is directed to the purchase of storm
suppression equipment at least partially through insurance premiums for the
areas to be protected (Spec. ¶ 9). Claim 1, reproduced below, is
representative of the subject matter on appeal.

1. A method of ecological alteration, comprising:
selling insurance policies regarding areas to be protected by
water property alteration equipment, the water property alteration
equipment including wave driven water temperature alteration
equipment;
funding at least one of purchase, operation, or maintenance of
the water property alteration equipment at least partially through
premiums collected from the selling; and
inducing water temperature changes in a region using the wave
driven water temperature alteration equipment in response to the
funding.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 1, 2, 6–10, 15–16, 21–26, 31–35, 39–44, 49–54, 58–62,
and 67–69 are rejected under 35 U.S.C. § 101.
2. Claims 1, 2, 6–10, 15–16, 21–26, 31–35, 39–44, 49–54, 58–62,
and 67–69 are rejected under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement.
3. Claims 1, 2, 6–10, 15–16, 21–26, 31–35, 39–44, 49–54, 58–62,
and 67–69 are rejected under 35 U.S.C. § 112, second paragraph.
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4. Claims 1–2, 6–10, 15–16, 21–26, 31–35, 39–44, 49–54, 58–62,
and 67–69 are rejected under 35 U.S.C. § 103(a) as unpatentable over Fox
(US 4,766,539, iss. Aug. 23, 1988), Spielmann (US 7,260,549 B2, iss. Aug.
21, 2007), and Blum (US 2002/0009338 A1, pub. Jan. 24, 2002).

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence1.

ANALYSIS
Rejection under 35 U.S.C. § 101
The Examiner has determined that claim 1 is directed to non-statutory
subject matter because it fails the machine-or-transformation test (Ans. 3-5,
21). In contrast, the Appellants have argued that this rejection is improper
(Br. 4–9).
We agree with the Appellants. The Examiner has applied the
machine-or-transformation test both citing and using outdated standards
from In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) and guidance from a
USPTO memorandum dated on Jan. 7, 2009 (see Ans. 4). This same
analysis was made going back to the Final Rejection of Dec. 14, 2010.
However, the Supreme Court had already modified the analysis of
non-statutory subject matter and the use of the machine-or-transformation
test on June 28, 2010. The Supreme Court made clear in Bilski v. Kappos,
130 S. Ct. 3218 (2010) that a patent claim's failure to satisfy the machine-or-

1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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transformation test is not dispositive of the § 101 inquiry. See id. at 3227.
Further, the USPTO had also issued new guidance on Jul. 27, 20102.
As the Examiner’s analysis incomplete as it includes only the
machine-or-transformation test and outdated guidance standards we will not
sustain these rejections as a prima facie case has not been established.
Further, the rejection of record appears to argue that the claims are
unpatentable under 35 U.S.C. § 101 for lack of utility but provides no claim
construction analysis as required. “[W]hether the ... patent is invalid for
failure to claim statutory subject matter under § 101[ ] is a matter of both
claim construction and statutory construction” State St. Bank & Trust Co. v.
Signature Fin. Group, 149 F.3d 1368, 1370 (Fed. Cir. 1998). As this
analysis has not been provided we will not sustain the rejection of record on
these grounds as well.

Rejection under 35 U.S.C. § 112, first paragraph
The Examiner has determined that the claims fail to comply with the
enablement requirement (Ans. 7–8, 22).
In contrast, the Appellants argue that the rejection is improper because
the rejection has failed to consider the appropriate factors for this rejection
(Br. 9–10).
We agree with the Appellants. “[T]o be enabling, the specification of
a patent must teach those skilled in the art how to make and use the full

2 See Subject Matter Eligibility for Process Claims in View of Bilski v.
Kappos
http://usptoexec/sites/bpai/mechbm/Shared%20Documents/Legal%20Guida
nce/35%20USC%20101/Statutory%20Subj%20Matter/Interim%20Guidance
%20In%20View%20of%20Bilski,%20Fed%20Reg%20July%202010.pdf
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scope of the claimed invention without ‘undue experimentation.”’ In re
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993) (citation omitted). Some
experimentation, even a considerable amount, is not “undue” if, e.g., it is
merely routine, or if the specification provides a reasonable amount of
guidance as to the direction in which the experimentation should proceed. In
re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Factors to consider include
“(1) the quantity of experimentation necessary, (2) the amount of direction
or guidance presented, (3) the presence or absence of working examples, (4)
the nature of the invention, (5) the state of the prior art, (6) the relative skill
of those in the art, (7) the predictability or unpredictability of the art, and (8)
the breadth of the claims. []” Wands (footnote omitted).
The Examiner's findings that at pages 7 and 8 of the Answer are not
sufficient to establish non-enablement because these findings do not show
that the Examiner's analysis considered all of the evidence as to each of the
pertinent Wands factors. Thus, we do not sustain the Examiner's rejection of
claims 1, 4, 6–11, 13–17 and 19–26 under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement.

Rejection under 35 U.S.C. § 112, second paragraph
The Appellants argue that the rejection of claim 1 as being indefinite
is improper (Br. 11).
In contrast, the Examiner has determined that claim 1 is indefinite for
failing to state for instance issues, such as failing to state the number or sizes
of the vessels used, the volume amounts of water moved, or the length or
cross-sectional area of the welling conduit.
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We agree with the Appellants. The Examiners citation at pages 9–10
of items not included in the claim are drawn not to indefiniteness but rather
simply to claim breadth and the rejection of this claim and the remaining
claims is not sustained.

Rejection under 35 U.S.C. § 103(a)
The Appellants argue that the rejection of claim 1 is improper because
the cited prior art fails to disclose any wave driven water temperature
alteration equipment as required by the claim (Br. 17–18).
In contrast, the Examiner has determined in the Answer at pages 10,
11, 16, and 17 that the cited claim limitation is taught by cited portions of
Fox (Abstract, col. 2:21–55), Blum (Abstract, Fig. 1–5, ¶¶ 3–10), and
Speilmann (Abstract, Fig. 2–4).
We agree with the Appellants. The cited above portions of the prior
art do not show any wave driven water temperature alteration equipment as
required by the claim. For example, Blum in the abstract shows the
apparatus powered by carbon dioxide and not a wave driven or wave driven
temperature type of equipment. As this cited claim limitation is not
specifically shown in the prior art, the rejection of claim 1 is sustained. The
remaining claims contain a similar limitation and the rejection of these
claims is not sustained as well.

CONCLUSIONS OF LAW
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims as listed in the rejection section above.

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DECISION
The Examiner’s rejection of claims 1, 2, 6–10, 15–16, 21–26, 31–35,
39–44, 49–54, 58–62, and 67–69 is reversed.

REVERSED

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