Marrone Bio Innovations, Inc.

Patent Trials and Appeals Board

Dec 8, 2020

2020003149 (P.T.A.B. Dec. 8, 2020)

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.
14/382,624 09/03/2014 Ratnakar Asolkar MOI-42030-US 8371
134653 7590 12/08/2020
The Law Offices of Chainey P. Singleton
Marrone Bio Innovations, Inc.
8330 LBJ Freeway
Suite B245
Dallas, TX 75243
EXAMINER
WHITE, DOUGLAS F
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
12/08/2020 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):
eofficeaction@appcoll.com
marrone_docketing@cardinal-ip.com
sliu@marronebio.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RATNAKAR ASOLKAR, ANA-LUCIA CORDOVA-KREYLOS,
MARJA KOIVUNEN, MARGARITA RODRIGUEZ,
LIJUAN XING, and PAMELA MARRONE
____________

Appeal 2020-003149
Application 14/382,624
Technology Center 1600
____________

Before JOHN E. SCHNEIDER, RYAN H. FLAX, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

FLAX, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims to a composition that has pesticidal or plant growth modulating
activity. Appellant appeals the rejection of claims 3–5, 14, and 16 under
35 U.S.C. § 101.1,2 We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 “Appellant” herein refers to the “applicant” as defined by 37 C.F.R. § 1.42.
Appellant identifies “Ivy Investment Management Company” as the real
party-in-interest. Appeal Br. 2.
2 Oral argument was heard on November 16, 2020; a transcript of the
hearing is, or will be made, a part of the record.
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STATEMENT OF THE CASE
Claim 3 is the independent claim on appeal and is reproduced below:
3. A composition comprising
(a) a whole cell broth collected from Flavobacterium sp.
H492 (NRRL Accession No. B-50584) agitated fermentation,
and
(b) a carrier, diluent, surfactant or adjuvant;
wherein said composition has pesticidal or plant growth
modulating activity.
Appeal Br. 31 (Claims Appendix).
The Specification states that “[n]atural products are substances
produced by microbes, plants, and other organisms” and that “natural
product pesticides have a potential to play an important role in controlling
pests in both conventional and organic farms.” Spec. 1:12–18. The
Specification indicates that “metabolites produced by microbes (bacteria,
actinomycetes and fungi) provide novel chemical compounds which can be
used either alone or in combination with known compounds to effectively
control insect pests and to reduce the risk for resistance development,” and
goes on to list many bacterial species, including certain Flavobacterium, that
are known to produce such toxins. Spec. 1:19–22, 3:7–26, 5:10–6:28.
The following rejection is on appeal:
Claims 3–5, 14, and 16 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception to patentability, i.e., “a natural product,”
without significantly more. Final Action 2; see also Answer 3, 5
(withdrawing all other rejections).
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DISCUSSION
I. LEGAL STANDARDS
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.
[Once] that burden is met, the burden of coming forward with evidence or
argument shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir. 1992).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patent-eligible. See, e.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine to what concept the claim is “directed.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
If the claim is “directed to” an abstract idea or law of nature or natural
phenomenon, we turn to the next step of the Alice and Mayo framework,
where “we must examine the elements of the claim to determine whether it
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contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract
idea [or law of nature or natural phenomenon] into a patent-eligible
application.” Alice, 573 U.S. at 221 (internal quotation marks omitted). For
example, “[a] claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [patent-ineligible concept].’” Id. (alterations in original)
(quoting Mayo, 566 U.S. at 77).
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”).3 “All USPTO personnel are, as a matter of internal
agency management, expected to follow the guidance.” Id. at 51; see also
October 2019 Update at 1. Under the Revised Guidance and the October
2019 Update, (as “Step 2A”) we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).4

3 The Office issued further guidance on October 17, 2019, clarifying the
Revised Guidance. USPTO, October 2019 Update: Subject Matter
Eligibility (the “October 2019 Update”) (available at https://www.uspto.gov/
sites/default/files/documents/peg_oct_2019_update.pdf).
4 This includes (a) identifying whether there are any additional elements
recited in the claim beyond the judicial exception, and (b) evaluating those
additional elements individually and in combination to determine whether
the claim as a whole integrates the exception into a practical application.
See Revised Guidance — Section III(A)(2), 84 Fed. Reg. at 54–55.
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Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
Revised Guidance, 84 Fed. Reg. at 52–56.
With these standards in mind, we address the Examiner’s rejection
and Appellant’s arguments thereover.
II. ANALYSIS
The Examiner determines that the claims “are directed to a natural
product (i.e., a law of nature/a natural phenomenon)” and “do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception.” Final Action 2. The Examiner determines that the
claimed whole cell broth collected from Flavobacterium sp. H492 (NNRL
Accession No. B-50584) fermentation results in a product that is “not
markedly different from its naturally-occurring counterpart because there is
no indication that the extract composition has any characteristics or
properties that are different from the naturally-occurring counterpart” and
“there is no indication that the instantly claimed preparatory steps have
caused the resulting composition to have any characteristics that are
different from the naturally-occurring counterpart.” Id. at 2–3.
Appellant presents evidence, which we discuss further below, in
support of its position that the claimed composition is different from any
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found in nature due to the processing technique of “agitated fermentation,”
as claimed. See Appeal Br. 12–16. The Examiner’s response to this
evidence is that a tested “embodiment of Flavobacterium sp. H492 (MBI-
302) + soil extract + agitation (reads on agitated fermentation),” meaning
this bacteria sample was fermented in soil while agitating, resulted in “only
. . . 1-2% killing activity,” and because this process “is within the scope of
the instant claims” the claimed invention “is not markedly different from its
naturally-occurring counterpart.” Answer 5. The Examiner relies on the
determination “that the soil extract reads on fermentation media,” meaning it
is his understanding that agitated fermentation of bacteria in soil is a natural
occurrence within the scope of the claims. Id.
In response to the Examiner’s rejection, Appellant argues that “[t]he
present invention is directed to a man-made, post-fermentation bacterial
broth that has different properties than the natural bacteria,” because the
claimed properties of the whole cell broth of “pesticidal or plant growth
modulating activity” are exhibited only as a result of the claimed “agitated
fermentation,” and are not exhibited under natural conditions. Appeal Br.
12–16. In support of this position, Appellant submits the 35 U.S.C. § 101
Rule 1.132 Declaration of Dr. Amit Vasavada, dated March 15, 2018
(“Vasavada Declaration”).
Dr. Vasavada states “that under natural conditions Flavobacterium sp.
H492 (MBI-302) was unable to produce nematicidal compounds that
resulted in a high mortality of nematodes,” but under “the claimed
conditions Flavobacterium sp. H492 (MBI-302) was able to produce
nematicidal compounds that resulted in a high mortality of nematodes.”
Vasavada Declaration ¶¶ 30–31. Dr. Vasavada included data of the results
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of testing the nematicidal (pesticidal) properties of Flavobacterium sp. cells
cultured under various conditions, which show that only such bacteria that
underwent agitated fermentation (grown in liquid V8 with agitation)
exhibited pesticidal activity. Id. at Table 1. The data show that natural
bacteria, without undergoing such agitated fermentation (e.g., grown in soil
with or without agitation, grown in V8 without agitation), did not have such
activity. Table 1, reproduced below, is a graph illustrating the experimental
data, as follows:

As shown above, the fourth and fifth bars from the left illustrate pesticidal
activity of bacteria cultured via agitated fermentation. Vasavada Declaration
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¶¶ 23–25. Each bar thereafter to the right represents an omission of either
the fermentation or the agitation from processing, and some test examples
indicate culturing in soil, seeking to replicate natural conditions. Id.
We find Appellant’s evidence persuasive. Upon analyzing the claims
pursuant to the Alice/Mayo steps and the Office’s Revised Guidance, as set
forth above, we conclude that Appellant demonstrates that the claimed
composition exhibits phenotypic differences compared to what would be
exhibited by a similar, natural composition, which are due to processing by
agitated fermentation, as claimed. Thus, contrary to the packaged bacteria
of Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948), the
bacterial species of the claims here does not have “the same effect it always
had” and does not “perform in [its] natural way.” Funk Bros., 333 U.S. at
131. And, unlike the cloned sheep of In re Roslin Inst. (Edinburgh), 750
F.3d 1333 (Fed. Cir. 2014), the claimed composition “possesses ‘markedly
different characteristics from any found in nature,’” in the form of
phenotypic differences that have come about by the effort of the inventors,
not independently as a natural phenomenon. In re Rosslin, 750 F.3d at 1336.
The Examiner has not explained why culturing the claimed bacterial
species in agitated soil would constitute the claimed agitated fermentation.
Further, the Examiner has not explained how or where the claimed bacteria
would naturally experience the claimed agitated fermentation. Moreover,
the Examiner has not provided evidence showing that any naturally
occurring sample of the claimed bacterial species exhibits the claimed
“pesticidal or plant growth modulating activity.” In other words, there is no
evidence of record that contradicts Appellant’s evidence, as set forth in the
Vasavada Declaration.
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For these reasons, we find that the claims are do not recite a law of
nature or natural phenomenon under Step 2A, Prong One, and we need
analyze the issue no further. We reverse the rejection of the claims as
directed to patent ineligible subject matter.
CONCLUSION
In summary:

Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
3–5, 14, 16 101 Eligibility 3–5, 14, 16

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED