Ex Parte Gonen et al

Patent Trials and Appeals Board

Apr 30, 2019

12200527 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/200,527 08/28/2008
71136 7590
Maldjian Law Group LLC
106 Apple Street
Suite 200N
Tinton Falls, NJ 07724
05/02/2019
FIRST NAMED INVENTOR
Ron Gonen
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.
REC020 7852
EXAMINER
HAMILTON, MATTHEW L
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
jmaldjian@mlgiplaw.com
mlgdocketing@mlgiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RON GONEN, FRANK C. YANG,
BOB MILLIGAN, and SCOTT LAMB
Appeal2017-010960
Application 12/200,527
Technology Center 3600
Before MARC S. HOFF, LARRY J. HUME, and LINZY T. McCARTNEY,
Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134 of the Examiner's final
rejection of claims 1-14. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2017-010960
Application 12/200,527
BACKGROUND
This patent application concerns "a community-based recycling
system and methods of utilizing same." Specification ,i 2, filed August 28,
2008 ("Spec."). Claims 1 and 9 are independent. Claim 1 illustrates the
claimed invention:
1. A community-based recycling system comprising:
a first entity, associated with a first recycling container
having an identification tag, wherein said first entity provides
recyclable material within the first recycling container;
a second entity, associated with a second recycling
container having another identification tag, wherein said second
entity provides recyclable material within the second recycling
container,
wherein the second entity and the first entity are members
of a location-based community;
a database for storing one or more records of the first entity
and the second entity, wherein the records comprise at least
identification information of said entities;
a load determining device for determining a gross
measurement of the recyclable material accumulated from both
the first entity and the second entity; and
a host server configured to determine a reward for entities
by dividing a gross value associated with the gross measurement
of the recyclable materials, by a number of entities providing
recyclable materials, wherein the host server grants equal reward
to each of the first entity and the second entity, and stores the
determined reward with the corresponding one or more records
of the entities.
Appeal Brief 30, filed January 5, 2017 ("App. Br.").
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1-14
1-14
1-14
REJECTIONS
§ 101
§ 112
§ 103
DISCUSSION
Casella, 1 Truitt,2 and
LaRocca3
We have reviewed the Examiner's rejections and Appellants'
arguments, and with the exception noted below, we disagree with Appellants
that the Examiner erred. As consistent with the following discussion, we
adopt the Examiner's findings, conclusions, and reasoning in the Final
Office Action mailed August 16, 2016 ("Final Act.") and the Answer mailed
May 4, 2017 ("Ans.").
Section 101 Rejection
Section 101 of the Patent Act provides that "any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof' is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
"Laws of nature, natural phenomena, and abstract ideas are not patentable."
Alice Corp. v. CLS Banklnt'l, 573 U.S. 208,216 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is "directed to one of those patent-ineligible
1 Casella et al. (US 2007/0219862 Al; Sept. 20, 2007).
2 Truitt (US 5,251,944; Oct. 12, 1993).
3 LaRocca et al. (US 2006/0205461 Al; Sept. 14, 2006).
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concepts." Alice, 573 U.S. at 217. If so, we then examine "the elements of
[the] 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, 573 U.S. at 217 ( quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an "inventive concept," "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."' Alice, 573 U.S. at 217-18 (alteration in original) (quoting
Mayo, 566 U.S. at 72-73).
The Patent Office recently issued guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) ("Revised Guidance"). Under the Revised Guidance, to decide
whether a claim is directed to an abstract idea, we evaluate whether the
claim ( 1) recites subject matter that falls within one of the abstract idea
groupings listed in the Revised Guidance and (2) fails to integrate the recited
abstract idea into a practical application. See Revised Guidance, 84 Fed.
Reg. at 51, 54. If the claim is directed to an abstract idea, as noted above, we
then determine whether the claim has an inventive concept. The Revised
Guidance explains that when making this determination, we should consider
whether the additional claim elements add "a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field" or "simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality." Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we tum to the § 101 rejection.
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Statutory Category
Claims 1-14 recite either a "community-based recycling system" or a
"recycling system." See App. Br. 30-32. The Examiner determined that
claims 1-14 are "not directed to statutory subject matter" because the claims
do not recite "the physical structures that make up the system." Final Act. 5;
see also Ans. 12. But as argued by Appellants, claims 1-14 explicitly recite
the "constituent structures that make up the system." App. Br. 16. For
example, claim 1 recites "a first recycling container having an identification
tag," "a second recycling container having another identification tag," "a
database," "a load determining device," and "a host server." App. Br. 30.
We thus agree with Appellants that the Examiner erred in this respect, and
we do not adopt this part of the Examiner's § 101 rejection.
Abstract Idea
The Examiner also determined that claims 1-14 are directed to
abstract ideas, including a fundamental economic practice and a mental
process. See Final Act. 3-4, 19-20. For the reasons discussed below,
Appellants have not persuaded us that the Examiner erred.
Fundamental Economic Practice
Claim 1 recites "[a] community-based recycling system" that includes
the following limitations: (1) "provides recyclable material within" first and
second recycling containers and (2) "determining a gross measurement of
the recyclable material accumulated from both the first entity and the second
entity." App. Br. 30. Claim 1 also recites (3) "determine a reward for entities
by dividing a gross value associated with the gross measurement of the
recyclable materials, by a number of entities providing recyclable materials."
App. Br. 30. Finally, claim 1 recites (4) "grants equal reward to each of the
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first entity and the second entity" and (5) "stores the determined reward with
the corresponding one or more records of the entities." App. Br. 30.
Under the broadest reasonable interpretation of these limitations, the
limitations recite a community-based recycling system that provides an
incentive for recycling. This interpretation flows from the plain language of
claim 1 and accords with the written description, which describes the
"present invention" in similar terms. See, e.g., Spec. ,i,i 2 ("Embodiments of
the present invention generally relate to an incentive based recycling system
and method thereof. More specifically, embodiments of the present
invention relate to a community-based recycling system and methods of
utilizing same."), 19 (same), 79 ("Generally, methods in accordance with
embodiments of the present invention utilize an incentive-based recycling
system .... "). The written description makes clear that the disclosed
incentives include financial rewards. See, e.g., Spec. ,i 88 ("In one
embodiment of the present invention, the rewards are monetary rewards
(e.g., cash, gift certificates, coupons for value, tickets, and the like). In
another embodiment of the present invention, the rewards are based upon a
points system, wherein points are redeemable for goods/services of at least a
vendor ( e.g., a coffee shop, clothing store, etc.).").
Providing financial rewards to recycle is an economic act that is not
meaningfully different from acts that courts have determined are
fundamental economic practices. See, e.g., Alice, 573 U.S. at 218
(intermediated settlement); Bilski v. Kappas, 561 U.S. 593, 611 (2010)
(hedging); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15 (Fed. Cir.
2014) (using an advertisement as currency). We thus determine that claim 1
recites a fundamental economic practice, one of certain methods of
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organizing human activity listed in the Revised Guidance. Revised
Guidance, 84 Fed. Reg. at 52. Claim 1 thus recites an abstract idea.
Appellants' arguments do not persuade us otherwise. Appellants
contend that the "determine a reward" and "storing" aspects of claim 1 are
not certain methods of organizing human activity because "the data to be
written into [the] database is in electronic form." App. Br. 13; see also App.
Br. 15. But Appellants have provided no persuasive evidence or reasoning to
support this argument. See App. Br. 13, 15. In any event, the Federal Circuit
has determined that, in some cases, similar limitations can form part of the
identified abstract idea. Cf Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) ("[W]e agree
with the district court that the claims of the asserted patents are drawn to the
abstract idea of 1) collecting data, 2) recognizing certain data within the
collected data set, and 3) storing that recognized data in a memory."); In re
TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016)
("Instead, the claims, as noted, are simply directed to the abstract idea of
classifying and storing digital images in an organized manner.").
Appellants also contend that claim 1 is distinguishable from
Ultramercial because "the claimed invention does not involve restricting
access to any media or rewards" as in Ultramercial and "Ultramercial ...
does not disclose currency generation based on measurements of input data
determined from a load-determining device ... as stated in the claimed
invention." App. Br. 14. But these contentions miss the point. In
Ultramercial, the Federal Circuit agreed with the district court that the
abstract idea "at the heart" of the claims was using an advertisement as an
exchange or currency. See Ultramercial, 772 F.3d at 714. Similarly, the
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claimed invention uses the "gross measurement of the recyclable materials"
as an exchange or currency because this measurement determines the
financial reward each entity receives. See App. Br. 30; Spec. ,i 88. We thus
find this argument unpersuasive.
Appellants also contend that claim 1 is distinguishable from buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014). See App. Br. 15.
Appellants assert that buySAFE concerns creating a contractual relationship
between parties and argue that claim 1 does not require a contractual
relationship between the recited entities. See App. Br. 15. Even ifwe were to
agree with Appellants on this point, we would still determine that claim 1
recites a fundamental economic practice for the reasons discussed above.
Mental Process
As noted above, claim 1 recites (1) "determining a gross measurement
of the recyclable material accumulated from both the first entity and the
second entity" and (2) "determine a reward for entities by dividing a gross
value associated with the gross measurement of the recyclable materials, by
a number of entities providing recyclable materials." App. Br. 30. Claim 1
also recites (3) "grants equal reward to each of the first entity and the second
entity." App. Br. 30.
People can perform each of these steps in their heads or using pen and
paper. For example, the "determining a gross measurement of the recyclable
material accumulated from both the first entity and the second entity" step
encompasses counting the number of recyclable materials deposited. See,
e.g., Spec. ,i,i 26 ("The load determining device 210 may include ... a
counting device ... for (i) determining a quantifiable measure ( e.g., weight,
quantity, etc.) of the deposited material .... " (emphases added)), 85
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("However, other processes of measuring the recyclable material may also
be available and may include, for example, a measurement of volume, mass,
quantity, or the like." (emphasis added)). This step thus encompasses people
mentally counting or writing down the number of accumulated recyclable
materials, for instance, the number of accumulated plastic bottles or
aluminum cans.
Similarly, people can perform the "determine a reward for entities by
dividing a gross value associated with the gross measurement of the
recyclable materials, by a number of entities providing recyclable materials"
and "grants equal reward to each of the first entity and the second entity"
steps in their heads or using pen and paper. The "determining" step involves
a simple mathematical calculation that people can mentally perform. As for
the "grant" step, neither claim 1 nor the written description places any
meaningful limits on how the step may be performed. This step thus
encompasses people mentally assigning each entity the same amount of
money or writing each entity a check for the same amount of money. Cf
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) ( determining that a claim step was so broadly worded that it
encompassed "even logical reasoning that can be performed entirely in the
human mind").
Appellants argue that claim 1 involves machine operations that
"cannot be performed by mental thinking, or by a human using pen and
paper" such as "perform[ing] entity authentication using machine readable
information." App. Br. 9. Appellants also note that the recited identification
tags may be RFID tags "used to track each collection of the deposited
recyclable material." App. Br. 12. But claim 1 does not limit the recited
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identification tags to RFID tags or recite using the tags to track collections of
deposited material. See App. Br. 30. Nor does claim 1 recite "perform[ing]
entity authentication using machine readable information." See App. Br. 30.
We thus find these arguments unpersuasive.
Appellants also argue that people cannot determine "a gross
measurement of the recyclables" because, if people tried to do so, "gross
error would be made in estimation of loads, and, where appropriate, types
and amount of recyclables." App. Br. 13. Appellants have provided no
persuasive evidence or reasoning to support this argument. On its face, claim
1 encompasses, for example, counting only a few plastic bottles or
aluminum cans placed in recycling containers. See App. Br. 30; see also
Spec. ,-J,-J 26, 85. People clearly can count a few of these items in their heads.
Considered as a whole, the "determining," "determine," and "grant"
steps discussed above recite a process that people can perform mentally or
by hand. The recited process is thus similar to other processes that courts
have determined are mental processes. See, e.g., CyberSource, 654 F.3d at
13 72 ( determining that a claim whose "steps can be performed in the human
mind, or by a human using a pen and paper" is directed to an unpatentable
mental process). This is true even though claim 1 recites that computer
components perform some of the claimed functions. "Courts have examined
claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person's mind." Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1335 (Fed. Cir. 2015). See also Revised Guidance, 84 Fed. Reg. at 52
n.14 ("If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
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components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind."). We therefore determine that
claim 1 also recites a mental process, one of the abstract idea groupings in
the Revised Guidance. See Revised Guidance, 84 Fed. Reg. at 52. Claim 1
thus recites an abstract idea.
Practical Application
Because we determine that claim 1 recites abstract ideas, we consider
whether claim 1 integrates these abstract ideas into a practical application.
See Revised Guidance, 84 Fed. Reg. at 51. In doing so, we consider whether
there are any additional elements beyond the abstract ideas that, individually
or in combination, "integrate the [ abstract ideas] into a practical application,
using one or more of the considerations laid out by the Supreme Court and
the Federal Circuit." Revised Guidance, 84 Fed. Reg. at 54-55.
For the recited fundamental economic practice, the additional
elements recited in claim 1 include ( 1) first and second entities that "are
members of a location-based community" and (2) first and second recycling
containers that each "hav[e] an identification tag." App. Br. 30. The
additional elements also include (3) a "load determining device," ( 4) a "host
server," and (5) "a database for storing one or more records of the first entity
and the second entity." See App. Br. 30.
Appellants have provided no persuasive evidence that suggests that
these elements, considered alone or together, involve any of the
considerations that have courts have determined may integrate an abstract
idea into a practical application. Rather, these elements appear to do "no
more than generally link the use of a [ abstract idea] ... to a particular
technological environment or field of use." See Revised Guidance, 84 Fed.
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Reg. at 55. These elements, taken individually or as a group, do not improve
the functioning of a computer, implement the recited fundamental economic
practice in conjunction with a particular machine integral to the claims, or
implicate any of the other concerns that might show that the additional
elements integrate the fundamental economic practice into a practical
application. See Revised Guidance, 84 Fed. Reg. at 55.
This holds true for the recited mental process. Along with the
additional elements discussed above for the recited fundamental economic
practice, the recited mental process includes the additional elements of
(1) providing recyclable material within first and second recycling
containers and (2) storing the determined reward with the corresponding one
or more records. See App. Br. 30. Providing recyclable material within first
and second recycling containers-that is, putting recyclable trash in
recycling bins-is akin to data gathering and thus does not render claim 1
patent eligible. See, e.g., CyberSource, 654 F.3d at 1372 ("[E]ven if some
physical steps are required to obtain information from the database ( e.g.,
entering a query via a keyboard, clicking a mouse), such data-gathering steps
cannot alone confer patentability."). And storing the determined reward with
the corresponding one or more records is simply token extra-solution
activity. "[T]he prohibition against patenting abstract ideas 'cannot be
circumvented by ... ' adding 'insignificant postsolution activity."' Bilski,
561 U.S. at 610-11 (quoting Diamond v. Diehr, 450 U.S. 175, 191-92
(1981 )).4 As a result, these additional elements, along with those discussed
4 Similarly, even if were to consider the "grants equal reward" step as an
additional element for the recited mental process, this step would not
integrate the mental process into a practical application because the step is
also insignificant postsolution activity.
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above, do not integrate the recited mental process into a practical
application.
Appellants assert that the claimed invention "effectively improves the
method of collecting and weighing recyclable materials." App Br. 12. But
Appellants have provided no persuasive evidence or reasoning to support
this assertion. Although the claimed invention grants rewards based on the
gross measurement of recyclable materials, Appellants have not shown that
doing so changes how recyclable materials are collected and weighed, much
less improves these functions.
For the above reasons, we determine that additional elements recited
in claim 1 do not integrate the identified abstract ideas into a practical
application.
Inventive Concept
We next consider whether claim 1 has an inventive concept, that is,
whether the additional claim elements "'transform the nature of the claim'
into a patent-eligible application." Alice, 573 U.S. at 217 (quoting Mayo,
566 U.S. at 78, 79). As discussed above, this requires us to evaluate whether
the additional claim elements add "a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field" or "simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality."
Revised Guidance, 84 Fed. Reg. at 56.
Appellants argue that the recited "storing one or more records,"
"determine a reward," and "stores the determined reward" limitations
provide an inventive concept. See App. Br. 9-10. According to Appellants,
storing records and determining rewards "are not routine functions
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performed by a generic computer." App. Br. 9. Appellants also contend that
storing records and a determined reward "involve transformation of the one
or more data records associated with the entities." App. Br. 12.
We find these arguments unpersuasive. Appellants have provided no
persuasive evidence that recited "database for storing one or more records"
and "host server configured to determine a reward" are unconventional or
operate in an unconventional fashion. Indeed, the written description
suggests that the elements are generic and operate in the expected manner.
See, e.g., Spec. ,-J,-J 39, 45-47, 52, 76. As for the transformation pointed to by
Appellants, the transformation simply manipulates data. This is not the type
of transformation that generally makes a claim patent eligible. Cf
CyberSource, 654 F.3d at 1375 ("The mere manipulation or reorganization
of data, however, does not satisfy the transformation prong.").
Finally, Appellants contend that claim 1 does not "create any risk of
preemption." App. Br. 10. Even if claim 1 does not preempt all ways of
encouraging recycling in a community-based recycling system, this fact
alone does not establish that claim 1 is patent eligible. The Federal Circuit
has "consistently held that claims that are otherwise directed to patent-
ineligible subject matter cannot be saved by arguing the absence of complete
preemption." Return Mail, Inc. v. U.S. Postal Serv., 868 F.3d 1350, 1370
(Fed. Cir. 2017).
At bottom, the record before us indicates that recited additional
elements "simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality."
Revised Guidance, 84 Fed. Reg. at 56; see also Spec. ,-J,-J 20, 23, 25-27, 39,
44-47, 65, 85, 88-90. Considered individually or together, these elements do
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not "'transform the nature of the claim' into a patent-eligible application."
Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). We therefore
determine that claim 1 does not recite an inventive concept.
Conclusion
For the above reasons, we determine that claim 1 is directed to an
abstract idea and does not have an inventive concept. We thus sustain the
Examiner's rejection of claim 1 under § 101. Appellants present
substantially similar arguments for independent claim 9, so we also sustain
the Examiner's rejection of claim 9 under § 101.
As for dependent claims 2-8 and 10-14, Appellants contend that the
Examiner has not shown that these claims are patent ineligible because the
Examiner did not individually address these claims. See App. Br. 10. But the
Examiner explained that these claims were rejected under § 101 for the same
reason as independent claims 1 and 9. See Final Act. 5; Ans. 4. Appellants
have not argued, much less shown, that anything in the dependent claims
renders the claims patent eligible. We therefore see no error in this approach
and sustain the Examiner's rejection of dependent claims 2-8 and 10-14
under§ 101. Cf Content Extraction, 776 F.3d at 1348 (agreeing with a
district court that "addressing each claim of the asserted patents was
unnecessary" when the district court determined that all the claims were
directed to the same abstract idea).
Section 112 Rejection
Claims 1 and 9 recite "the host server ... stores the determined
reward with the corresponding one or more records of the entities." App. Br.
30, 32 ( emphasis added). The Examiner determined the words "the
corresponding one or more records of the entities" lacks antecedent basis
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and thus rejected claims 1 and 9 and their respective dependent claims as
indefinite. See Final Act. 5-6.
Appellants argue that claims 1 and 9 provide antecedent basis for the
words "the corresponding one or more records of the entities" because the
claims respectively recite "storing one or more records of the first entity and
the second entity, wherein the records comprise at least identification
information of said entities" and "obtain information of both the first entity
and the second entity and store the obtained information in a database." App.
Br. 19-20.
We find Appellants' arguments unpersuasive. Because neither claim 1
nor claim 9 recites "a corresponding one or more records of the entities" it is
unclear what the words "the corresponding one or more records of the
entities" refers to. See App. Br. 30, 31-32. This is particularly true for claim
9, which uses the word "records" only in the limitation "the corresponding
one or more records of the entities." See App. Br. 31-32. We thus sustain the
Examiner's rejection of claims 1-14 on this ground.
Section 103 Rejection
For this rejection, the main issue is whether US Patent Application
No. 11/345,867 ("the '867 Application"), a parent of the patent application
at issue, provides written description support for claim 1. See App. Br. 20-
26. If so, Appellants contend that claim 1 is entitled to the effective filing
date of the '867 Application and thus LaRocca and Casella are not prior art
to claim 1. See App. Br. 20-26. If not, Appellants do not otherwise dispute
that LaRocca and Casella are prior art to claim 1. See App. Br. 20-26.
The Examiner determined that the '867 Application does not provide
written description support for the limitations recited in claim 1 and thus
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LaRocca and Casella are prior art to the claim. See Final Act. 23-25; Ans.
13-16. Appellants disagree and point to certain portions of the '867
Application that Appellants believe provide the necessary written
description support. See App. Br. 20-26.
Appellants have not persuaded us that the Examiner erred. For claim 1
to be entitled to the effective filing date of the '867 Application, the '867
Application must provide adequate written description support for the claim.
See 35 U.S.C. §§ 112, 120; see also Lockwood v. Am. Airlines, Inc., 107
F.3d 1565, 1571 (Fed. Cir. 1997). To provide adequate written description
support for claim 1, the '867 Application must "reasonably convey[] to those
skilled in the art that the inventor had possession of the claimed subject
matter as of the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en bane). "One shows that one is 'in
possession' of the invention by describing the invention, with all its claimed
limitations .... " Lockwood, 107 F.3d at 1572.
As found by the Examiner, the '867 Application does not provide
adequate written description support for at least the "host server" limitation
recited in claim 1. Appellants contend that column 5, lines 62-65 of the '867
Application provides written description support for this limitation. See App.
Br. 21, 25. 5 This part of the '867 Application discloses that "[t]he database
and algorithms also enable the flexibility to apply different reward rates for
recycling by household, street, township, city or state to ensure that
5 The '867 Application issued as US Patent No. 7,949,557, and Appellants
and the Examiner appear to cite the issued patent when referring to the '867
Application. See, e.g., App. Br. 21; Final Act. 24-25. For consistency, we do
so as well.
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households receive the optimum impact of the incentive." '867 Application
5:62-65.
On its face, this sentence describes applying different reward rates for
recycling, not a host server configured to determine a reward "by dividing a
gross value associated with the gross measurement of the recyclable
materials, by a number of entities providing recyclable materials," or that
"grants equal reward to each of the first entity and second entity" as the
limitation at issue requires. And Appellants have not persuasively explained
how this sentence shows the inventors possessed this subject matter. If
Appellants contend that this limitation would have been obvious given the
cited sentence, "a description that merely renders the invention obvious does
not satisfy the [written description] requirement." Ariad, 598 F.3d at 1352.
Appellants do not contend that any other part of the '867 Application
provides written description support for this limitation, and we see nothing
in the '867 Application that provides the necessary support. We thus
determine that claim 1 is not entitled to the effective filing date of the '867
Application.
Finally, Appellants argue that even if LaRocca is prior art for claim 1,
LaRocca does not teach or suggest the recited "host server." See App. Br.
26-28. Appellants contend that LaRocca discloses a reward program in
which "equal distribution of reward among all the members is not fully
guaranteed." App. Br. 27. Thus, according to Appellants, LaRocca does not
teach "determin[ing] a reward for entities by dividing a gross value
associated with the gross measurement of the recyclable materials, by a
number of entities providing recyclable materials" and "grant[ing] equal
reward to each" entity. See App. Br. 26-27. Appellants also argue that
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Application 12/200,527
LaRocca does not teach that the entities are members of a "location-based
community." See App. Br. 26-28.
We find these arguments unpersuasive. First, as found by the
Examiner, LaRocca teaches that a "gaming operator may divide the team
reward or benefit evenly among the team members and may credit each team
player's account accordingly." LaRocca ,-J 31 ( emphasis added), cited in
Final Act. 9. We agree with the Examiner that this teaching, combined with
the teachings of Casella and Truitt, renders obvious "determin[ing] a reward
for entities by dividing a gross value associated with the gross measurement
of the recyclable materials, by a number of entities providing recyclable
materials" and "grant[ing] equal reward to each" entity. See Final Act. 6-9;
Ans. 16-17.
Second, the Examiner found that Truitt teaches that first and second
entities are part of a location-based community. See Final Act. 8. The
Examiner concluded that the claimed subject matter would have been
obvious over a combination of Truitt' s, LaRocca' s, and Casella' s teachings.
See Final Act. 6-9. Appellants' arguments against LaRocca on this point
have therefore not persuaded us that the Examiner erred.
DECISION
1-14 § 101 1-14
1-14 § 112 1-14
Casella,
1-14 § 103 Truitt, and 1-14
LaRocca
Outcome 1-14
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Appeal2017-010960
Application 12/200,527
No period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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