Ex Parte Dunlap

Board of Patent Appeals and Interferences

Jul 10, 2012

11384004 (B.P.A.I. Jul. 10, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/384,004 03/17/2006 Susan C. Dunlap 231.01NP 6330
36955 7590 07/10/2012
MOORE PATENTS
794 LOS ROBLES AVENUE
PALO ALTO, CA 94306-3159
EXAMINER
SKOWRONEK, KARLHEINZ R
ART UNIT PAPER NUMBER
1654
MAIL DATE DELIVERY MODE
07/10/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte SUSAN C. DUNLAP
__________

Appeal 2011-005298
Application 11/384,004
Technology Center 1600
__________

Before DONALD E. ADAMS, ERIC GRIMES, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a process
and system for plant selection. The Examiner has rejected the process
claims as being directed to nonstatutory subject matter, and has rejected all
of the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
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STATEMENT OF THE CASE
The Specification states that a “long-standing problem that has
frustrated anyone seeking to identify an unknown plant specimen using
traditional resources is the inability to simply and accurately identify the
plant species and its genus based on the specimen’s physical traits”
(Spec. 1: 19-21). The Specification discloses that the “apical complex of a
plant illustrates unique identifying traits for each plant species” (id. at
4: 4-5). “[T]he ‘apical complex’ refers to a complicated group of
interwoven parts found when the tip, apex, or summit of a stem, branch, or
plant is viewed overhead; e.g., a top view of the crown of a tree, an overhead
view of a sub shrub, an overhead view of a single branch of a shrub, or the
magnified longisection of the tip of a stem” (id. at 10: 26-29).
Claims 1-11, 28-31, and 33-43 are on appeal. Claim 1 is
representative and reads as follows:
1. A process for plant selection, comprising:
providing to a user a database of plant species comprising an image of
an above-ground apical complex for each plant, wherein said image has
sufficient resolution such that the user can see distinguishing characteristics
of the apical complex sufficient to distinguish each plant species from all
other plant species in the same genus in the database;
eliminating a portion of the plant species using at least two search
criteria to further eliminate unsuited plant species; and
displaying to the user at least one image of the plant species meeting
the search criteria, at least one of said images being of distinguishing
characteristics of the apical complex typical for the plant species.

Claim 34, the only other independent claim, is directed to a process
that includes, among other steps, providing a database that comprises an
image database comprising “a plurality of images of plant species including
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an image of an aboveground apical complex for each plant, wherein said
image has sufficient resolution such that the user can see distinguishing
characteristics of the apical complex sufficient to distinguish each plant
species from all other plant species in the same genus in the database.” The
full text of claim 34 is reproduced in the Claims Appendix of the Appeal
Brief (pages 30-31).
Claims 39-41 depend indirectly on claim 1 and are directed to a
system for carrying out the claimed plant selection process.
I.
The Examiner has rejected claims 1-11, 28-31, 33-38, 42, and 43
under 35 U.S.C. § 101 as being directed to an abstract idea (Answer 4). The
Examiner finds that the rejected claims are “directed to the abstract idea of
selecting plants based on a criterion-matching scheme. . . . The claims are
merely directed to the concept of selecting plants from a collection of plant
descriptions by the process of elimination.” (Id. at 4-5.)
Appellant argues that the “claims are not directed to an abstract idea
but rather to a new and useful, concrete, tangible, and practical process that
takes advantage of a new discovery, namely the existence of a cluster of
distinguishing traits at the apical complex of plants” (Appeal Br. 6).
Appellant argues that the “discovery itself is not claimed, and other uses of
the discovery are not preempted by the claimed process” (id.) and contends
that the claims “are directed to a new and useful process which does not in
any way preempt the wider use of any abstract idea or law of nature” (id. at
11).
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We agree with Appellant that the Examiner has not persuasively
shown that the claimed process is directed to an abstract idea, and therefore
outside the scope of 35 U.S.C. § 101. The Examiner finds that “the claims
do not recite either a machine or transformation” (Answer 5) but the
Supreme Court held in In re Bilski, 130 S.Ct 3218 (2010), that the machine-
or-transformation test is not the sole test of whether a claimed process
satisfies § 101. The Examiner cited this holding (Answer 5) but did not
explain why it supports the instant rejection.
The Examiner interprets the claims as being “directed to the abstract
idea of selecting plants based on a criterion-matching scheme” (Answer 4)
or “directed to the concept of selecting plants from a collection of plant
descriptions by the process of elimination” (id. at 5). We agree with
Appellants, however, that the Examiner has misinterpreted the scope of the
claims.
The claims do not encompass all methods of selecting plants based on
matching desired criteria with criteria set out in a database. Instead, all of
the rejected claims require providing a database that includes an “image of
an above ground apical complex for each plant, wherein said image has
sufficient resolution such that the user can see distinguishing characteristics
of the apical complex sufficient to distinguish each plant species from all
other plant species in the same genus in the database” (see claims 1 and 34).
The rejected claims also require displaying the results of the plant selection
process in the form of “at least one image of the plant species meeting the
search criteria, at least one of said images being of distinguishing
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characteristics of the apical complex typical for the plant species” (see
claims 1 and 34).
The Examiner’s rejection does not take into account the specific
database and specific form of results that are required by the claims on
appeal, or explain why these limitations do not distinguish the claimed
processes from the abstract idea of selecting plants based on matching
criteria. Further, in the time since the Examiner’s Answer was written, the
U.S. Supreme Court has provided additional guidance regarding the
requirements of 35 U.S.C. § 101. See Mayo Collaborative Services v.
Prometheus Labs., Inc., 132 S.Ct 1289 (2012).
In Prometheus, the Court considered claims that included the active
steps of administering a drug to a subject and determining the level of a
metabolite in the subject. See id. at 1295. The claims also included
“wherein” clauses, id., that “set forth laws of nature—namely, relationships
between concentrations of certain metabolites in the blood and the likelihood
that a dosage of a thiopurine drug will prove ineffective or cause harm.” Id.
at 1296. The Court held that the claims were invalid under 35 U.S.C. § 101
because the “steps in the claimed processes (apart from the natural laws
themselves) involve well-understood, routine, conventional activity
previously engaged in by researchers in the field. At the same time,
upholding the patents would risk disproportionately tying up the use of the
underlying natural laws, inhibiting their use in the making of further
discoveries.” Id. at 1294.
The rejection on appeal here, having been written before Prometheus
was decided, does not address the standard set out in that case. In short, we
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conclude that the rejection based on 35 U.S.C. § 101 is based on an improper
interpretation of the claims and does not take into account recent controlling
precedent. We therefore reverse the rejection of claims 1-11, 28-31, 33-38,
42, and 43 under 35 U.S.C. § 101.
II.
The Examiner has rejected claims 1-11, 28-31, and 33-43 under
35 U.S.C. § 103(a) as obvious based on the Guide,1 Plant Facts,2 plant facts
(OSU),3 the Plant Select Database,4 sustland,5 and Tsagari6 (Answer 5-6).
The Examiner finds that the Guide “provides a pictorial database of plant
species. . . . Opposing each description is an image of a plant showing an
apical complex of sufficient resolution sufficient to distinguish a species of
plant from others in the same genus.” (Answer 6-7.) The Examiner reasons
that “[a]s defined in the specification, an apical complex refers to a
complicated group of interwoven parts of a plant. To the extent that apical
complex is defined in the specification, the figures of plates 63, 64, 67, and
68 show apical complexes.” (Id. at 7.) The Examiner finds that the “Guide

1 Simon and Schuster’s Guide to Plants and Flowers, A. Mondadori (ed.),
Simon & Schuster, New York (1974).
2 web.archive.org/web/20021202223402/http://plantfacts.osu.edu/
Plant/a_search.lasso.
3 plantfacts.osu.edu/plant/a_search.lasso, accessed April 25, 2008.
4 web.archive.org/web/20001205083600/www.sustland.umn.edu/
plant/search.asp, accessed October 1, 2007.
5 www.sustland.umn.edu/plants/, accessed April 25, 2008.
6 Tsagari et al., e-flora: e-commerce & the agricultural SMEs, in E-WORK
AND E-COMMERCE: NOVEL SOLUTIONS AND PRACTICES FOR A GLOBAL
NETWORKED ECONOMY, B. Stenford-Smith et al. (eds.), Chesire Henbury
(2001).
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does not explicitly show the elimination of a portion of the database” (id. at
8), and relies on the other cited references to suggest this limitation of the
claims (see id. at 8-10).
Appellant argues that the “images in Guide simply do not come
remotely close to ‘showing an apical complex of sufficient resolution to
distinguish species of plant from others in the same genus’ as alleged by the
Examiner. The claims require that all plants in the database be represented
by such images.” (Appeal Br. 17.) Appellant argues that the “figures of
plates 63, 64, 67, and 68 may each show some vegetative detail, but they fail
to qualify as images of apical complexes, because they fail to show the
complicated group of interwoven parts at the tip, apex or summit of a stem,
branch, or plant” (id. at 19). Appellant also argues that the claims require
the apical complex images to “have ‘sufficient resolution such that the user
can see distinguishing characteristics of the apical complex sufficient to
distinguish each plant species from all other plant species in the same genus
in the database.’ The Examiner has not even alleged that the figures of
plates 63, 64, 67, and 68 meet this requirement, much less that all of the
images in Guide meet this requirement.” (Id. at 20.)
We agree with Appellant that the Examiner has not persuasively
shown that the Guide, or any of the other cited references, discloses the
images that are required by the claims on appeal. Both of the independent
claims require providing a database of plant species that includes “an image
of an above-ground apical complex for each plant, wherein said image has
sufficient resolution such that the user can see distinguishing characteristics
of the apical complex sufficient to distinguish each plant species from all
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other plant species in the same genus in the database” (claims 1 and 34,
emphasis added).
The Examiner concludes that the image requirement of the claims is
“very broad and encompasses any image of a plant with which one can
distinguish one species from another in the same genus. However, nowhere
in the specification does it indicate the an [sic] image of an apical complex
must be an overhead or longisection image.” (Answer 14.)
We disagree. The Specification defines an “apical complex” to mean
“a complicated group of interwoven parts found when the tip, apex, or
summit of a stem, branch, or plant is viewed overhead” (Spec. 10: 26-27).
Thus, the claims require using a database that includes, for each plant
species in the database, an image, from overhead, of a complicated group of
interwoven parts at the tip of the stem, branch, or plant of sufficient
resolution to distinguish each plant species from all other species in the same
genus in the database.
The Examiner has pointed to plates 63, 64, 67, and 68 of the Guide as
meeting the claim requirement (Answer 7) but Appellant has disputed this
finding (Appeal Br. 19). Appellant supported her argument with
declarations under 37 C.F.R. § 1.132 from three people of skill in the art,7
who declared that the “images in Guide do not show apical complexes of
sufficient resolution to distinguish species. Most of the images do not show
apical complexes at all.” (Paragraph 11 of the Kemble Declaration, Roberts
Declaration, and Schramm Declaration.)

7 Declarations under 37 C.F.R. § 1.132 of Brian Kemble, Elton Roberts, and
Nancy Schramm, all filed Sept. 1, 2009.
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The Examiner acknowledged the statements in the Declaration
(Answer 15) but found them unpersuasive because “[t]he claims do not
require apical views” (id. at 16). As discussed above, we disagree with the
Examiner’s interpretation of the images that are required by the claims. The
Examiner has not persuasively shown that the Guide or any of the other cited
references provide or would have made obvious the images recited in the
claims on appeal. We note that the images in plates 63, 64, 67, and 68 of the
Guide show plants that are all in different genera, and the Examiner has not
provided evidence or sound technical reasoning to show that the image of,
for example, Acer japonicum in plate 63 shows an apical complex of
sufficient resolution to allow Acer japonicum to be distinguished from other
species in the genus Acer.
Because the Examiner has not persuasively shown that the cited
references would have made obvious a process or system meeting all of the
limitations of the claims on appeal, we reverse the rejection of claims 1-11,
28-31, and 33-43 under 35 U.S.C. § 103(a).
SUMMARY
We reverse the rejection of claims 1-11, 28-31, 33-38, 42, and 43
under 35 U.S.C. § 101, and the rejection of claims 1-11, 28-31, and 33-43
under 35 U.S.C. § 103(a).

REVERSED

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