Ex Parte Bowers et alDownload PDFPatent Trial and Appeal BoardJun 25, 201412006804 (P.T.A.B. Jun. 25, 2014) Copy Citation 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). Appeal 2011-013593 Application 12/006,804 2 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. Appeal 2011-013593 Application 12/006,804 3 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). Appeal 2011-013593 Application 12/006,804 4 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 Appeal 2011-013593 Application 12/006,804 5 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. Appeal 2011-013593 Application 12/006,804 6 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. Appeal 2011-013593 Application 12/006,804 7 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 mp Copy with citationCopy as parenthetical citation