Ex Parte Norgaard et al

Patent Trial and Appeal BoardMar 24, 2015

12287051 (P.T.A.B. Mar. 24, 2015)

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. 12/287,051 10/03/2008 Daniel G. Norgaard 3334.02US03 6981 24113 7590 03/24/2015 PATTERSON THUENTE PEDERSEN, P.A. 4800 IDS CENTER 80 SOUTH 8TH STREET MINNEAPOLIS, MN 55402-2100 EXAMINER NGUYEN, SON T ART UNIT PAPER NUMBER 3643 MAIL DATE DELIVERY MODE 03/24/2015 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 DANIEL G. NORGAARD and BRUCE C. BURNS ____________________ Appeal 2013-000546 Application 12/287,051 1 Technology Center 3600 ____________________ Before: JENNIFER D. BAHR, STEVEN D.A. MCCARTHY, and STEFAN STAICOVICI, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Daniel G. Norgaard and Bruce C. Burns (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 31–37, 39, 41–44, and 46–48 under 35 U.S.C. § 103(a) as unpatentable over Kuji (US 2002/0133505 A1, pub. Sept. 19, 2002) and Orr (US 6,212,824 B1, iss. Apr. 10, 2001); and rejecting claims 38, 40, and 45 under 35 U.S.C. § 103(a) as unpatentable over Kuji, Orr, and Croplan (Croplan Genetics 2004 Seed Guide). We have jurisdiction under 35 U.S.C. § 6(b). 1 The Appeal Brief indicates that the real party in interest is New Vision Co- op. Appeal Br. 2. Appeal 2013-000546 Application 12/287,051 2 We REVERSE and enter NEW GROUNDS OF REJECTION. THE CLAIMED SUBJECT MATTER Claims 31 and 41, reproduced below, are independent and are illustrative of the claimed subject matter. 31. A system for matching crop varieties of a crop to soil type, the system comprising: a digitized map depicting soil management categories of a region; and a plurality of crop varieties of a crop, each crop variety having one or more known crop varietal responses in a specific soil management category, the one or more known crop varietal responses for each crop variety being based on an ability of the crop variety to grow in the specific soil management category, wherein a crop variety from the plurality of crop varieties is matched to the one or more soil management categories based on the one or more known crop varietal responses of the crop variety in each of the one or more soil management categories. 41. A system for operating a computer to facilitate selection of specific crop varieties in varying soil types within a given field, the system comprising: a data set stored on a tangible medium, the data set including – a set of soil management categories at least partially derived from physical characteristics of soils present in the given field, and a set of crop varieties of a crop derived from crop varietal adaptation to the physical characteristics of the soils in the field, wherein each crop variety is recommended to be grown in one or more of the soil management categories; and imaging means for displaying a digitized map, wherein each soil management category is designated on the digitized map by a unique indicium, and each crop variety adapted to be Appeal 2013-000546 Application 12/287,051 3 grown in the corresponding soil management category is designated by the same indicium. OPINION For the reasons discussed below, claims 31–48 are indefinite. We do not sustain the rejections of these claims under 35 U.S.C. § 103(a) because to do so would require speculation as to the scope of the claims. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation rejection of indefinite claims); In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a), because the rejection was based on speculative assumptions as to the meaning of the claims). NEW GROUNDS OF REJECTION Claims 31–40 During examination, an applicant must “clearly and precisely set out the metes and bounds of the claimed [subject matter].” Ex parte Miyazaki, 89 USPQ2d 1207, 1211-13 (BPAI 2008) (precedential). Our reviewing court instructs us that an applicant “is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.” Halliburton Energy Servs. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). Claim 31 is directed to “[a] system for matching crop varieties of a crop to soil type.” The term “system” has acquired at least two different meanings, one of which is “a set or arrangement of things so related or Appeal 2013-000546 Application 12/287,051 4 connected as to form a unity or organic whole” or “a group of devices or artificial objects or an organization forming a network especially for distributing something or serving a common purpose” and another of which is “an established way of doing something; method; procedure.” 2 Although Appellants’ Specification does not explicitly define the term “system,” the Specification uses the term “system” numerous times in a manner that strongly suggests that Appellants intend the first meaning. See, e.g., Spec. 2:8 (“system or method”), 7:17-18 (“mapping and analysis system”), 8:14 (“sensor system”), 9:17, 24 (“computerized control system” and “system and method”), 14:23 (“system includes a circuit”). 15:15, 19 (“system includes a location signal generator” and “system also includes an electronic display”), 16:12–13 (“software-based system and method”). With “system” construed in this manner, claim 31 appears to be directed to a structure, i.e., a machine. Claim 31 recites “a digitized map depicting soil management categories of a region.” This appears to be a recitation of structure and, thus, is consistent with claim 31 being directed to a machine. Claim 31 next recites “a plurality of crop varieties of a crop” each having one or more known varietal responses in a specific soil management category based on an ability to grow in the specific soil management category. It is not clear whether this recitation is intended to recite the physical crops (i.e., plants) themselves or something more conceptual, such as a catalogue (database) of information about a plurality of crop varieties of a crop and their known crop varietal responses based on ability to grow in 2 See, e.g., system. Webster’s New World Dictionary (David B. Guralnik ed., 2 nd Coll. Ed., Simon & Schuster, Inc. 1970, 1984); system. http://www.merriam-webster.com/dictionary/system (last visited February 26, 2015). Appeal 2013-000546 Application 12/287,051 5 the specific soil management category. The claim does not require that the crop varieties be depicted on the digitized map. Finally, claim 31 recites “wherein a crop variety from the plurality of crop varieties is matched to the one or more soil management categories based on the one or more known crop varietal responses of the crop variety in each of the one or more soil management categories.” 3 It is not clear whether this recitation merely specifies a relationship/correlation between a crop variety and the one or more soil management categories or whether it requires a positive decisional step of matching a crop variety to the one or more soil management categories. Notably, claim 31 does not positively recite any structure for performing such a matching step. Depending on how the second and third recitations of claim 31 are construed, one plausible construction of claim 31 requires nothing more than a plurality of physical plants representing different crop varieties of a crop, each having known varietal responses based on ability to grow in a specific soil management category; and a digitized map depicting soil management categories, such that at least one of the crop varieties of the crop happens to have a known crop varietal response in the soil management category. Another plausible construction of claim 31 requires a database of information about a plurality of crop varieties and their known varietal 3 In the event that prosecution of this application continues in the wake of this decision, the Examiner may wish to consider whether the term “the one or more soil management categories” appearing near the end of claim 31 lacks antecedent basis. Previous to the appearance of this term, the claim recites only “a digitized map depicting soil management categories of a region,” that is, plural soil management categories, or that “each crop variety [has] one or more known crop varietal responses in a specific soil management category.” There exists no antecedent basis for reciting “the one or more soil management categories.” Appeal 2013-000546 Application 12/287,051 6 responses based on ability to grow in a specific management category and a digitized map depicting soil management categories, such that at least one of the crop varieties of the crop happens to have a known crop varietal response in the soil management category. A third plausible construction of claim 31 requires a plurality of crop varieties (either physical or conceptual, such as a catalogue or database of information), a digitized map depicting soil management categories, and a decisional step of matching a crop variety with one or more known varietal responses based on an ability to grow in a specified soil management category to the one or more soil management categories. Because claim 31 is amenable to two or more plausible claim constructions, it is unpatentable under 35 U.S.C. § 112, second paragraph, as being indefinite. See Miyazaki, 89 USPQ2d at 1211 (“if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite.”) Moreover, regarding the aforementioned third plausible construction, although the recitation in the last paragraph of claim 31 is expressed in the passive rather than active voice, one can only determine whether the limitation is satisfied once someone or something matches a crop variety to the one or more soil management categories. We again emphasize that claim 31 does not set forth structure for performing a matching step. In IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005), a patent holder sought to enforce a claim reciting a “system . . . wherein the predicted transaction information comprises both a transaction Appeal 2013-000546 Application 12/287,051 7 type and transaction parameters associated with that transaction type, and the user uses the input means to either change the predicted transaction information or accept the displayed transaction type and transaction parameters.” IPXL Holdings at 1384 (italics in original). On appeal, our reviewing court interpreted this claim as reciting both a system and a method step to be carried out by a user. Our reviewing court held that: it is unclear whether infringement . . . occurs when one creates a system that allows the user to change the predicted transaction information or accept the displayed transaction, or whether infringement occurs when the user actually uses the input means to change transaction information or uses the input means to accept a displayed transaction. Because [the claim] recites both a system and the method for using that system, it does not apprise a person of ordinary skill in the art of its scope. Id. In H-W Tech., L.C. v. Overstock.com, Inc., 758 F.3d 1329 (Fed. Cir. Jul. 11, 2014), a patent holder sought to enforce a claim reciting: A tangible computer readable medium encoded with computer program for performing contextual searches on an Internet Phone (IP) phone comprising the steps of: receiving a command to perform a contextual search; receiving search criteria from a user of said IP phone; submitting said search criteria to a server coupled to said IP phone; and receiving from said server a list of merchants matching said search criteria and information regarding each of said merchants in said list; wherein said user completes a transaction with at least one of said merchants listed without the need to generate a voice call; wherein said information received by said user comprises a variety of offers, wherein said user selects one of said variety of offers associated with said one of said merchants listed, wherein said selected offer is transmitted to said one of said merchants listed electronically; and Appeal 2013-000546 Application 12/287,051 8 wherein said user’s contact and payment information is not transmitted to said one of said merchants listed, wherein said user’s contact and payment information is available to said one of said merchants listed. Id. at 1335 (italics in original). On appeal from a district court decision holding the claim invalid as indefinite, our reviewing court agreed that the italicized limitations were method steps recited in an apparatus claim. Citing the reasoning of IPXL Holdings and In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318 (Fed. Cir. 2011), our reviewing court held that the claim was indefinite because “it is unclear here when infringement would occur.” Id. at 1336. Like the claims in IPXL Holdings and H-W Technology, a maker or seller of a system for matching crop varieties of a crop to soil type comprising a plurality of crop varieties and a digitized map depicting soil management categories of a region cannot determine whether the system will infringe, directly or contributorily, at the time of manufacture or sale. Thus, claim 31 is indefinite for this additional reason. For the above reasons, pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claim 31 under 35 U.S.C. § 112, second paragraph, as indefinite. For the same reasons, pursuant to 37 C.F.R. § 41.50(b), we also reject claims 32–40, which depend from claim 31 and do not contain limitations that fully resolve the aforementioned ambiguities of claim 31, under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 41–48 Claim 41 is directed to “[a] system for operating a computer to facilitate selection of specific crop varieties in varying soil types within a Appeal 2013-000546 Application 12/287,051 9 given field” comprising a data set, stored on a tangible medium, including a set of soil management categories and a set of crop varieties each of which “is recommended to be grown in one or more of the soil management categories;” and “imaging means for displaying a digitized map, wherein each soil management category is designated on the digitized map by a unique indicium, and each crop variety adapted to be grown in the corresponding soil management category is designated by the same indicium.” The sixth paragraph of 35 U.S.C. § 112 (2011) states: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. Claim 41 uses the term “means” in the “imaging means for displaying . . .” recitation. “The use of the word ‘means,’ which is part of the classic template for functional claim elements, gives rise to ‘a presumption that the inventor used the term advisedly to invoke the statutory mandates for means- plus-function clauses.’” Sage Prods., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1427 (Fed. Cir. 1997) (citations and internal quotation marks omitted). Moreover, claim 41 does not elaborate any structure, material, or acts to perform the recited function. Thus, the “imaging means for displaying . . .” limitation in claim 41 is a means-plus-function recitation as provided in 35 U.S.C. § 112, sixth paragraph. “The first step in construing a means-plus-function claim limitation is to define the particular function of the claim limitation . . . . The next step Appeal 2013-000546 Application 12/287,051 10 . . . is to look to the specification and identify the corresponding structure for that function.” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333– 34 (Fed. Cir. 2004) (citation omitted). “Under this second step, ‘structure disclosed in the specification is “corresponding” structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim.’” Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed.Cir.2003) (quoting B. Braun Med. Inc. v. Abbott Labs., 124 F.3d 1419, 1424 (Fed.Cir.1997)); see also Aoyama, 656 F.3d at 1300 (holding that the Board erred in identifying structure that was not clearly linked or associated by the specification or prosecution history with the function recited in a means-plus-function recitation). As our reviewing court stated in In re Dossel, 115 F.3d 942, 946 (Fed. Cir. 1997) (quoting In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994)), [a]lthough paragraph six statutorily provides that one may use means plus function language in a claim, one is still subject to the requirement that a claim “particularly point out and distinctly claim” the invention. Therefore, if one employs means plus function language in a claim, one must set forth in the specification an adequate disclosure showing what is meant by that language. If an applicant fails to set forth an adequate disclosure, the applicant has in effect failed to particularly point out and distinctly claim the invention as required by the second paragraph of section 112. There are two functions recited in the “imaging means for displaying a digitized map” limitation. The first recited limitation is “imaging” and the second recited limitation is “displaying a digitized map, wherein each soil management category is designated on the digitized map by a unique Appeal 2013-000546 Application 12/287,051 11 indicium, and each crop variety adapted to be grown in the corresponding soil management category is designated by the same indicium.” The term “imaging” is not merely a label for the recited “means”—it identifies a function different from “displaying a digitized map” and must be given effect in the claim. Appellants’ Specification does not explicitly identify structure that performs both an imaging function and the displaying function recited in claim 41. Spec. passim. Appellants’ Specification does not use the term “imaging.” Spec. passim. However, the Specification does disclose that some or all of the soil characteristics used in their method may be obtained from digitized maps, which, in turn, “may be generated by accessing information obtained from, e.g., aerial mapping protocols,” such as a mapping and analysis system including “an air-based device for generating spectral image data related to at least one of vegetation stress and a soil characteristic for a portion of [a] field.” Spec. 7:14–21 (citing US 5,467,271, iss. Nov. 14, 1995). The Specification also alludes to a performance monitor for a seed-planting implement that includes a controller that applies a display signal to an electronic display in the tractor cab to produce an image viewable by an operator. Spec. 12:11–19 (citing US 5,956,255, iss. Sept. 21, 1999). The Specification additionally mentions a known process for determining the health of crops in a field and for correcting deficiencies therein, the process including photographing from the air georeferenced portions of the field, differentiating soil and crops in the photographs by segmenting images to select crop pixels, preparing a relative greenness map providing crop information, and “treating the crops in the field in accordance with the relative greenness map.” Spec. 16:24 – 17:22 (citing US 6,160,902, iss. Appeal 2013-000546 Application 12/287,051 12 Dec. 12, 2000; US 6,178,253, iss. Jan. 23, 2001; and US 6,529,615, iss. Mar. 4, 2003). Thus, Appellants’ Specification uses the term “image” both in the context of an image viewable on an electronic display and in the context of data acquired by aerial photographing or mapping techniques. In their Appeal Brief, Appellants point to the disclosure in their Specification from page 21, line 25 to page 22, line 6 as supporting the “means” limitation of claim 41. Appeal Br. 6. The passage cited by Appellants reads as follows: While other means may be suitable, presenting the present soil management categories is contemplated to be done graphically by imposing these categories over digitized soil maps, e.g., using a computer to depict the unique one or more indicia, hence one or more management categories, on a screen. Crop varieties may be depicted in this manner as well, but may also be presented by a color-coded list printed on a sheet of paper. Spec. 21:25 – 22:6. Based on our findings above, it is not possible to construe with any reasonable certainty the scope of the “imaging” and “displaying” functions contained in the means-plus-function recitation of claim 41. It is not clear, for example, whether the “imaging” function includes acquiring the image data for mapping the soil management categories in the field to generate the digitized map. Further, it is not clear whether the “displaying” function includes circuitry or software for assigning each soil management category and each crop variety an indicium or whether the displaying function simply receives and displays the digitized map with already-assigned indicia superimposed thereover. Consequently, it is not possible to identify with any reasonable certainty the structure that corresponds to the imaging and displaying Appeal 2013-000546 Application 12/287,051 13 functions contained in the means-plus-function recitation of claim 41. Moreover, the portion of the Specification pointed to by Appellants in their Appeal Brief as supporting the “means” limitation of claim 41 discloses only a general purpose computer, without any accompanying disclosure of an algorithm, code, or circuitry for performing the function. This is not sufficient to satisfy Appellants’ burden to set forth in the Specification an adequate disclosure showing what is meant by the means-plus-function language in compliance with the requirement to particularly point out and distinctly claim the invention as required by 35 U.S.C. § 112, second paragraph. See Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008) (reiterating that in cases involving a computer-implemented invention claimed using means-plus-function claiming, “the structure disclosed in the specification [must] be more than simply a general purpose computer or microprocessor” and pointing out that “[b]ecause general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to ‘the corresponding structure, material, or acts’ that perform the function,” as required by 35 U.S.C. § 112, sixth paragraph). In instances where the specification discloses only a general purpose machine with no algorithm to carry out the function or states appropriate programming is used, the claim language is generally considered purely functional and fails to satisfy the requirements of 35 U.S.C. § 112, second paragraph. See, e.g., Ergo Licensing, LLC. v. Carefusion 303, Inc., 673 F.3d 1361, 1363 (Fed. Cir. 2012). Appeal 2013-000546 Application 12/287,051 14 For the above reasons, claim 41 and its dependent claims 42–48 are indefinite. Thus, pursuant to our authority under 37 C.F.R. § 41.50(b), we reject claims 41–48 under 35 U.S.C. § 112, second paragraph, as indefinite. Moreover, because, for the reasons discussed above, Appellants’ Specification does not provide an adequate written description of the structure that performs the “imaging” and “displaying” functions of the means-plus-function recitation of claim 41 to clearly allow persons of ordinary skill in the art to recognize that Appellants invented what is claimed, claim 41 and its dependent claims 42–48 also fail to comply with the written description requirement of 35 U.S.C. § 112, first paragraph. See Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (stating that the purpose of the written description requirement in 35 U.S.C. § 112, first paragraph, is to “clearly allow persons of ordinary skill in the art to recognize that [the inventor] invented what is claimed” and that “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.”) (citing In re Gosteli, 872 F.2d 1008, 1012 (Fed. Cir. 1989)). Thus, pursuant to 37 C.F.R. § 41.50(b), we also reject claims 41–48 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. DECISION The Examiner’s decision rejecting claims 31–48 under 35 U.S.C. § 103(a) is REVERSED. The following NEW GROUNDS OF REJECTION are entered pursuant to 37 C.F.R. § 41.50(b): Appeal 2013-000546 Application 12/287,051 15 Claims 31–40 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 41–48 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Claims 41–48 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. FINALITY OF DECISION This decision contains new grounds of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE 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)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b)