Ex Parte Avey et al

Patent Trial and Appeal Board

Sep 24, 2018

13793673 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/793,673 03/11/2013
27310 7590 09/26/2018
PIONEER HI-BRED INTERNATIONAL, INC.
7250 N.W. 62ND A VENUE
P.O. BOX552
JOHNSTON, IA 50131-0552
FIRST NAMED INVENTOR
Donald Avey
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.
5317-US-NP 7861
EXAMINER
WONG,LUT
ART UNIT PAPER NUMBER
2129
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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):
sue.smith@pioneer.com
PTO-Legal.PRC@dupont.com
IPSupport@pioneer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONALD A VEY, PHILLIP L. BAX,
WADE ALEXANDER GIVENS, ROBERT L. HEIMBAUGH,
STEVEN BRENT MITCHELL, and JUN WEI 1
Appeal2018-003263
Application 13/793,673
Technology Center 2100
Before MICHAEL J. STRAUSS, IRVINE. BRANCH, and
JON M. JURGOV AN, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellant, the real party in interest is Pioneer Hi-Bred
International, Inc. See App. Br. 1.
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-11, 26-41, and 50-60. Claims 12-25 and 42--49 are withdrawn. App. Br.
21, 28 (Claims App'x.) We have jurisdiction under 35 U.S.C. § 6(b).
We affirm. 2
THE INVENTION
The claims are directed to a targeted agricultural recommendation
system. Spec., Title. Claim 1, reproduced below with a disputed limitation
emphasized in italics, is illustrative of the claimed subject matter:
1. A method for generating agricultural nutrient input
recommendations, the method comprising:
receiving one or more indications of a localized usage
context, wherein at least one indication defining the localized
usage context is weather data, at least one indication defining the
localized usage context is a nutrient use model, and at least one
indication defining the localized usage context is a hydrology
model;
determining, based on the one or more indications, one or
more suggested agricultural nutrient inputs; and
causing the one or more suggested agricultural nutrient
inputs to be provided.
2 We refer to the Specification, filed Mar. 11, 2013 ("Spec."); the Final
Office Action, mailed July 25, 2015 ("Final Act."); the Advisory Action
mailed Sept. 22, 2017 (Advisory Act.); the Appeal Brief, filed Nov. 1, 2017
as supplemented on Nov. 10, 2017 ("App. Br."); the Examiner's Answer,
mailed Dec. 15, 2017 ("Ans."); and the Reply Brief filed Feb. 2, 2018
("Reply Br."). Because Appellants' Appeal Brief is not page numbered, for
purposes of reference, we begin numbering at the first page, titled
"APPELLANT'S BRIEF PURSUANT TO 37 C.F.R. § 41.37."
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REFERENCES
The following prior art is relied upon by the Examiner in rejecting the
claims on appeal:
Avey et al. US 2006/0282228 Al Dec. 14, 2006
("Avey")
Chandrasekaran et al., "Context Aware Mobile Service
Deployment Model of Agricultural Information System for
Indian Farmers" International Journal of Computer
Applications (0975-8887), Vol. 1, No. 29, 581---635
(2010) ("Chandrasekaran").
REJECTIONS
Claims 1-11, 26-41, and 50---60 stand rejected under 35 U.S.C. § 101
as being directed to a judicial exception. Ans. 2-6.
Claims 1-11, 26-41, and 50---60 stand rejected under pre-AIA 35
U.S.C. § I03(a) as being unpatentable over Avey and Chandrasekaran. Final
Act. 2-8.
ANALYSIS
Appellants' contentions are unpersuasive of reversible Examiner error.
We adopt as our own (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken (Final Act. 2-8) including the
New Grounds of Rejection made subsequently (Ans. 2---6) and (2) the
reasons set forth by the Examiner in the Examiner's Answer in response to
Appellants' Appeal Brief ( Ans. 6-11) and concur with the conclusions
reached by the Examiner. We highlight the following for emphasis.
35 U.S.C. § 101
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
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[ w ]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvernent thereof~ may obtain a patent therefor,
subject to the conditions and requirements of this title.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not pre-empt "the basic tools of scientific and
technological work." Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014). The rationale
is that patents directed to basic building blocks of technology would not
"promote the [p]rogress of [s]cience" under the U.S. Constitution, Article I,
Section 8, Clause 8, but instead would impede it. Accordingly, laws of
nature, natural phenomena, and abstract ideas, are not patent-eligible subject
matter. Thales Visionix Inc. v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017)
( citing Alice, 134 S. Ct. at 2354).
The Supreme Court set forth a two-part framework for analyzing
subject matter eligibility in Alice (134 S. Ct. at 2355). The first step is to
determine whether the claim is directed to a patent-ineligible concept. Id.
( citing Mayo, 566 U.S. at 76-77). If so, then the eligibility analysis
proceeds to the second step of the Alice/ Mayo framework in which we
"examine the elements of the claim to determine whether it contains an
'inventive concept' sufficient to 'transform' the claimed abstract idea into a
patent-eligible application." Alice, 134 S. Ct. at 2357 ( quoting Mayo, 566
U.S. at 72, 79).
The "inventive concept" may be embodied in one or more of the
individual claim limitations or in the ordered combination of the limitations.
Id. at 2355. The "inventive concept" must be significantly more than the
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abstract idea itself, and cannot be simply an instruction to implement or
apply the abstract idea on a computer. Id. at 2358. "'[W]ell-understood,
routine, [and] conventional activit[ies]' previously known to the industry"
are insufficient "to transform an abstract idea into a patent-eligible
invention." Id. at 2359-60 (citing Mayo, 566 U.S. at 73).
Alice/Mayo Step 1: Abstract Idea
The Examiner finds "[ c ]laim 1 is directed to an abstract idea of
'generating agricultural nutrient input recommendations'." Ans. 3.
According to the Examiner:
Claim 1, recites, in part, a method for collecting information
(receiving localized usage context indicators), analyzing it
( determining suggested agricultural input based on the
indicators) and displaying certain result of the collection and
analysis (providing the suggested agricultural input), which is
similar to the concepts that have been identified as abstract by
the courts, such as collecting information, analyzing it and
displaying certain result of the collection and analysis.
Id (citing Electric Power Group, LLC v. Alstom Ltd., 830 F.3d 1350 (Fed.
Cir. 2016)).
Appellants contend the rejection is improper because it fails to comply
with USPTO policy which, according to Appellants, requires the Examiner
establish into which of four categories set forth in USPTO "Guidance
Documents" the rejected claims fall. Reply Br. 2 ( citing the "Preliminary
Examination Instructions in view of the Supreme Court Decision in Alice
Corporation Pty. Ltd. v. CLS Bank International, et al.," Memorandum to the
Examining Corps, June 25, 2014; the July 2015 Update on Subject Matter
Eligibility, 80 Fed. Reg. 45429 (July 30, 2015) ("2015 Update"); and May
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2016 Subject Matter Eligibility Update, 81 Fed. Reg. 27381 (May 6, 2016)
("2016 Update") ( collectively "Guidance Documents")). 3 Appellants argue
the Examiner's reference to Electric Power is insufficient to support a
determination that the claims are directed to an abstract idea because the
Examiner failed to consider claim limitations "requiring the application of
the suggested agricultural input and the production of a tangible crop" and
"causing the suggested agricultural inputs to be provided." Reply Br. 3.
According to Appellants the Examiner "dismisses those steps as
'insignificant post solution activities'", thereby failing to consider the claims
as a whole as is required by the Guidance Documents. Id.
Appellants' contention are unpersuasive of error in the Examiner's
determination that the claims are directed to an abstract idea. Initially we
disagree the claims are not abstract because the subject matter of the claims
is not identified in the list of categories of abstract ideas set forth in the
Guidance Documents, i.e., is not specifically identified by the Examiner as
being (i) a fundamental economic practice, (ii) a method of organizing
human, (ii) an idea of itself, or (iv) a mathematical relationship or formula.
See Reply Br. 2. The cited Guidance Documents provide guidance to
Examiners while the Board is bound to follow Supreme Court and Federal
Circuit precedent. See In re Fisher, 421 F.3d 1365, 1372 (Fed. Cir. 2005)
("The MPEP and Guidelines 'are not binding on this court."') (citations
omitted). Appellants have not cited any persuasive legal authority
demonstrating that abstract ideas are limited to the four categories set forth
in the Memorandum. Instead, we "examine earlier cases in which a similar
3 See also the 2014 Interim Guidance on Patent Subject Matter Eligibility, 79
Fed. Reg. 74618 (Dec. 16, 2014).
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or parallel descriptive nature can be seen--what prior cases were about, and
which way they were decided." Amdocs (Israel) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
Furthermore we are not persuaded the Examiner has failed to "build a
prima facie case of non-patentable subject matter." Reply Br. 3. The
Federal Circuit has repeatedly observed that "the prima facie case is merely
a procedural device that enables an appropriate shift of the burden of
production." Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The USPTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for the rejection, "together with such information and references
as may be useful in judging of the propriety of continuing the prosecution of
[the] application." See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(alteration in original). All that is required of the Office is that it sets forth
the statutory basis of the rejection in a sufficiently articulate and informative
manner as to meet the notice requirement of§ 132. Id.; see also Chester v.
Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) ("Section 132 is violated when
a rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection.").
Here, the Examiner set forth the basis for the § 101 rejection in a
sufficiently articulate and informative manner as to meet the notice
requirement of§ 132. In doing so the Examiner has set forth a proper
rejection under§ 101 such that the burden shifted to Appellants to
demonstrate that the claims are patent-eligible. The Examiner's
determination that the claims are "directed to an abstract idea of' generating
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agricultural nutrient input recommendations'" (Ans. 3) is consistent with
Appellants disclosure that the invention relates to "generating agricultural
recommendations" (Spec. 2) and claim 1 's steps of determining and
providing suggested agricultural nutrient inputs. Furthermore, the Examiner
explains how each claim limitation is interpreted as corresponding to an
abstract idea: "a method for collecting information ([ corresponds to the
recited step ofJ receiving localized usage context indicators), analyzing it
([ corresponds to the recited step ofJ determining suggested agricultural input
based on the indicators) and displaying certain result of the collection and
analysis ([ corresponds to the recited step ofJ providing the suggested
agricultural input)." Ans. 3.
Contrary to Appellants, we find the Examiner's citation to Electric
Power is appropriate support for a determination that the indicated steps of
claim 1 are abstract ideas. In Electric Power, the method claims at issue
were directed to performing real-time performance monitoring of an electric
power grid by collecting data from multiple data sources, analyzing the data,
and displaying the results. Electric Power Grp., 830 F.3d at 1351-52. The
Federal Circuit held that the claims were directed to an abstract idea,
explaining that "[ t ]he advance they purport to make is a process of gathering
and analyzing information of a specified content, then displaying the results,
and not any particular assertedly inventive technology for performing those
functions." Electric Power Grp., 830 F.3d at 1354. Here, we agree with the
Examiner that the steps of claim 1 fall within the realm of these abstract
ideas. See, e.g., Elec. Power Grp., 830 F.3d 1353-54 (when "the focus of
the asserted claims" is "on collecting information, analyzing it, and
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displaying certain results of the collection and analysis," the claims are
directed to an abstract idea).
We are also unpersuaded of error by Appellants' contention that the
step of taking action in response to the displayed results is not insignificant
post solution activity but transforms the claims from being primarily
directed to an abstract idea into patentable subject matter. In particular,
Appellants contend "[a]ctual production of the crop, and/or application of
the specific inputs, are tangible steps that result in the production of crops
with higher yields and/or better quality characteristics." However, the issue
in determining whether a claim is directed to an abstract idea according to
Step 1 of the Alice/Mayo framework is not whether the claim includes
mental gymnastics devoid of tangible components but whether the tangible
requirements are of sufficient significance in the context of the claim.
Herein, Appellants argue causing agricultural nutrient input to be provided
(i.e., acting on the of the recited determining step) results in higher crop
yields. Reply Br. 3. However, the claim neither requires any such increase
nor is it specific about what action is required in performance of the argued
step of causing the one or more suggested agricultural nutrient inputs to be
provided. Referring to paragraphs 4, 5, and 53 of Appellants' Specification
cited for describing the argued step (CORRECTED SECTION IV TO
APPELLANT'S BRIEF PURSUANT TO 37 C.F.R. § 41.37 filed Nov. 10,
2017, p. 2 "SUMMARY OF CLAIMED SUBJECT MATTER"), we are
unable to identify any required corresponding actions. Furthermore, even if
otherwise, Appellants fail to demonstrate that any such actions are other than
insignificant post solution activity. See Parker v. Flook, 437 U.S. 584, 590
(1978) ("The notion that post-solution activity, no matter how conventional
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or obvious in itself, can transform an unpatentable principle into a patentable
process exalts form over substance."). That is, merely requiring action
based on the results of a computation does not automatically transform a
claim otherwise directed to an abstract idea into patentable subject matter.
Here, the recited generalized action of causing the determined nutrient input
to be provided is insufficient to change the thrust of the claim and render it
directed to patentable subject matter.
For the reasons discussed above, we agree with the Examiner in
determining claim 1 is directed to an abstract idea.
Alice/Mayo Step 2: Inventive Concept
The Examiner finds "[t]he claim(s) does/do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the use of generic computer components to display
information does not impose any meaningful limit on the computer
implementation of the abstract idea." Ans. 3. The Examiner concludes
"taken alone, the additional elements do not amount to significantly more
than the above-identified judicial exception (the abstract idea)." Id.
Appellants argue:
The present claims are more than mere statements of a concept.
The claims describe a specific solution to a problem to be solved,
namely, the production of more or better agricultural crops. The
human activities practiced as part of the method are not merely
organized, but are implemented in a tangible way. The
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performance of the presently claimed method steps are
observable and verifiable.
Reply Br. 3.
Appellants' argument does not address the Examiner findings and is,
therefore, unpersuasive. Whether the claims are directed to a specific
problem solution, include tangible components, or observable and verifiable
steps does identify aspects of the claim which go beyond the abstract idea
itself. In particular, in step 2 of the Alice/Mayo framework 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." Alice, 134 S. Ct. at 2355 (quoting
Mayo, 566 U.S. at 78). The Supreme Court has "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." Id. ( quotation omitted).
Limiting the method to generating agricultural nutrient input
recommendations is, at most, no more than limiting the abstract concept to a
particular technological environment which is insufficient to transform the
claim into patent-eligible subject matter. See Alice, 134 S. Ct. at 2358
("[L ]imiting the use of an abstract idea 'to a particular technological
environment"' is "not enough for patent eligibility." (citation omitted));
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010); Elec. Power, 830 F.3d at
13 54 ("[L ]imiting the claims to the particular technological environment of
power-grid monitoring is, without more, insufficient to transform them into
patent-eligible applications of the abstract idea at their core."); Ultramercial,
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Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) ("Narrowing the
abstract idea of using advertising as a currency to the Internet is an
'attempt[] to limit the use' of the abstract idea 'to a particular technological
environment,' which is insufficient to save a claim." ( alteration in original)
( quoting Alice, 134 S. Ct. at 2358)). Similarly, use of a computer or
processor to perform the argued method ( e.g., independent claims 31 and 50)
also fails to render the claims patentable. See Alice, 134 S. Ct. at 2358 ("[I]f
a patent's recitation of a computer amounts to a mere instruction to
'implemen[t]' an abstract idea 'on ... a computer,' that addition cannot
impart patent eligibility." (second alteration in original) (citation omitted)).
For the reasons discussed above, Appellants fail to persuade us the
Examiner erred in determining the claims are directed to an abstract idea
without more in rejecting claim 1. Therefore, we sustain the rejection of
claim 1 under 35 U.S.C. § 101 as being directed to a judicial exception and,
for the same reasons, we sustain the rejection of claims 2-11, 26-41, and
50-60 which are not argued separately with particularity.
35 U.S.C. § 103(a)
Appellants contend Chandrasekaran "does not disclose a nutrient use
model or a hydrology model" as required by the disputed limitations of
claim 1. App. Br. 15. Appellants argue a "distinction between the teaching
of Chandrasekaran and the present invention is that the [ agricultural
concept] cube in Chandrasekaran represents stored information that is
retrieved by the 'context aware system', but it does not utilize or teach
utilizing a nutrient use model or hydrology model as a component of the
information to be retrieved." According to Appellants, although
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Chandrasekaran' s context migration table and agricultural concept cube
include "Irrigation" and "Fertilizer" components (Chandrasekaran Fig. 1,
Table 1) thereby disclosing fertilizer use and irrigation amounts, "there is no
teaching that a model is used to determine the localized fertilizer needs or
irrigation needs." App. Br. 16. Appellants argue the Examiner erred in
interpreting both the recited (i) hydrology model of claim 1 as including any
model/pricing of hydrology, such as "irrigation amount", and (ii) nutrient
model of claim 1 as including any model/policy of nutrient, such as
"fertilizer", as respectively shown in Chandrasekaran's Table 1. Id.
According to Appellants, the Examiner's interpretation is overly broad in
view of the plain meaning of the disputed claim terms as disclosed at
paragraph 26 the Specification. Id.
The Examiner responds, finding that "Chandrasekaran disclose[s] in
section 1 that each context is a point in information space of context aware
computing model. As such, each context/information is considered as a
model or a [ sub model] within the context aware computing model." Ans. 7.
The Examiner explains:
each context/information [point] is considered as a model or a
[submodel] within [Chandrasekaran's] context aware computing
model. Furthermore, a point on the model cube such as irrigation
is modeled by Process, policy and profit as seen on Table 1 and
that fertilizer/nutrient is modeled by process, planning, and
profit. These points are a function of those variables, and the
function is essentially modeling these points on the cube, hence
model.
Ans. 8.
Appellants reply, arguing Chandrasekaran's disclosure of irrigation
and fertilizer data does not predict water flow on and through the soil or
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nutrient uptake by a plant and, therefore, are not hydrology or nutrient use
models, respectively. Reply Br. 4.
We are unpersuaded by Appellants contention. Appellants fail to
address the Examiner's finding that Chandrasekaran' s context aware
computing model includes irrigation (i.e., hydrology) and fertilizer (i.e.,
nutrient use) components thereby teaching or suggesting the disputed
nutrient use and a hydrology models. Furthermore Appellants' Specification
lacks a specific definition of what is meant by a model, instead, repeatedly
referencing dataset and data models in the conjunctive (i.e., "datasets and/or
data model") including disclosing a common set of examples equated to both
datasets and data models. See, e.g., Spec. ,r 26. 4 Thus, Appellants have
failed to persuade us that, under a broad but reasonable interpretation
consistent with the specification, the hydrology and nutrient use models of
claim 1 are not taught or suggested by Chandrasekaran' s irrigation and
fertilizer context points.
For the reasons discussed above, we sustain the rejection of
independent claim 1 and, for the same reasons, independent claim 26-31
and 50 under 35 U.S.C. § 103(a) over Avey and Chandrasekaran together
with the rejection of dependent claims 2-11, 32--41, and 51---60 which are
not argued separately with particularity.
4 [D]atasets and/or data models may include, for example, crop models; soil
datasets; product datasets; location-specific historical data; crop
management datasets; insect, weed, and/or disease datasets; historical,
current, and/or forecast crop price datasets; crop nutrient data sets; pest
management datasets; seed treatment datasets; pesticide and/or herbicide
datasets; customer information data sets; yield monitor data sets; product
performance data sets or the like.
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DECISION
We affirm the Examiner's decision to reject claims 1-11, 26-41, and
50-60 under 35 U.S.C. § 101.
We affirm the Examiner's decision to reject claims 1-11, 26-41, and
50-60 under 35 U.S.C. § 103(a).
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. § 41.50(±).
AFFIRMED
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