Ex Parte Rey

Patent Trial and Appeal Board

May 3, 2016

12518095 (P.T.A.B. May. 3, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121518,095 09/23/2010 Eric Rey
20872 7590 05/05/2016
MORRISON & FOERSTER LLP
425 MARKET STREET
SAN FRANCISCO, CA 94105-2482
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.
595792002200 2055
EXAMINER
VYAS, ABHISHEK
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
05/05/2016 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):
EOfficeSF@mofo.com
PatentDocket@mofo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC REY
Appeal2013-010485
Application 12/518,095 1
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPPER,
and SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final decision to reject claims 1-3, 8-10, 12-18, 31-33, 38--41,
and 54. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to the Appellant, the real party in interest is Arcadia
Biosciences, Inc. Appeal Brief filed October 31, 2012, hereafter "App. Br.,"
1.
Appeal2013-010485
Application 12/518,095
BACKGROUND
The invention relates to trading greenhouse gas emission credits.
Abstract; Specification, hereinafter "Spec.," i-f 2. To trade greenhouse gas
emission credits on an electronic trading market, an amount of nitrogen
applied or to be applied to obtain a desired crop yield using a genetically
modified version of a plant is determined. Id. i-f 6.
Representative claim 1 is reproduced from page 32 of the Claims
Appendix of the Appeal Brief (Claims App'x) as follows, with emphasis
added to relevant claim limitations:
1. A method of trading greenhouse gas emission
credits on an electronic trading market, the method comprising:
determining an amount of nitrogen applied or to be
applied to obtain a desired crop yield using a genetically
modified version of a plant, wherein the genetically modified
version of the plant has a nitrogen utilization efficiency greater
than a non-genetically modified version of the plant;
determining an amount of greenhouse gas emission
based on the determined amoitnt of nitrogen applied or to be
applied to obtain the desired crop yield using the genetically
modified version of the plant;
calculating, using a seller terminal, an amount of
greenhouse gas emission credit available to be traded based on
the determined amount of greenhouse gas emission, wherein the
amount of greenhouse gas emission credit available to be traded
is calculated by the seller terminal; and
conveying at least a portion of the calculated amount of
greenhouse gas emission credit to one or more potential buyers
through the electronic trading market.
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Application 12/518,095
In a Final Rejection, the Examiner rejects claims 1, 3, 8-10, 13, and
17 under 35 U.S.C. § 103(a) as obvious over Zimmerman2 and Good,3
claims 2, 18, 31-33, and 38--41 over Zimmerman, Good, and Faeth4,
claim 12 over Zimmerman, Good, and Delucchi5 or Mosier,6 claim 14 over
Zimmerman, Good, and Sowinski, 7 claim 15 over Zimmerman, Good,
Sowinski, and Walsh, 8 claim 16 over Zimmerman, Good, Sowinski, and
Copenhaver,9 and claim 54 over Zimmerman, Good, Faeth, and Delucchi or
Mosier. The Examiner also provisionally rejects claims 1, 2, 8-10, 13-18,
31-32, and 38--41 under nonstatutory obviousness-type double patenting as
unpatentable over co-pending Application 12/518,09610 in view of
Zimmerman. Final Action11 mailed March 1, 2012, hereinafter "Final Act.,"
4--28; see also Ans. 3-23.
2 US Publication 2005/0273358 Al, published December 8, 2005.
3 US Publication 2005/0044585 Al, published February 24, 2005.
4 US Publication 2002/0055902 Al, published May 9, 2002.
5 l\1ark 1A. .. Delucchi, et al., "ii .. Lifecycle Emissions l\1odel (LEl\1): Lifecycle
Emissions From Transportation Fuels, Motor Vehicles, Transportation
Modes, Electricity Use, Heating and Cooking Fuels, and Materials,
Appendix C: Emissions Related To Cultivation And Fertilizer Use,"
Institute of Transportation Studies, University of California, Davis, UCD-
ITS-RR-03- l 7C, 1-84 (December 2003).
6 Arvin Mosier, et al., "Closing the global N20 budget: nitrous oxide
emissions through the agricultural nitrogen cycle," Nutrient Cycling in
Agroecosystems, 52:225 (1998).
7 US Patent 6,601,033 Bl, issued July 29, 2003.
8 US Publication 2007/0016511 Al, published January 18, 2007.
9 US Publication 2003/0131372 Al, published July 10, 2003.
10 US Application 12/518,096, filed September 23, 2010.
11 A rejection made under 35 U.S.C. § 101 as to claims 1, 2-3, 8-10, 12-16,
31, 32-33, 38--40, and 54 was withdrawn in the Examiner's Answer, mailed
June 21, 2013, hereinafter "Ans.," 3. Should there be further prosecution of
this application, the Examiner may wish to review all claims for compliance
with 35 U.S.C. § 101 in light of the more recent Office guidance on patent
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Application 12/518,095
DISCUSSION
The Appellant presents common arguments for the obviousness
rejections for the grouping of claims 1-3, 8-10, 12, 13, 17, 18, 31-33, and
3 8--41, and 54, with some additional issues presented as to the obviousness
rejections of claims 14, 15, and 16. We address the claims in a similar
manner, using claim 1 as representative for the grouping, and separately
addressing the additional arguments for claims 14, 15, and 16.
35 U.S.C. § 103(a)
Claims 1-3, 8-10, 12, 13, 17, 18, 31-33, 38--41, and 54
For claims 1, 3, 8-10, 13, and 17, the Appellant argues that
Zimmerman and Good do not teach the step of determining greenhouse gas
emissions based on the amount of nitrogen applied (input), but instead it is
based upon the amount of emissions stored or discharged (output). App. Br.
7-16; Reply Brief filed August 19, 2013, hereinafter "Reply Br.," 2--4. With
respect to the other claims in this grouping, the Appellant contends that
additional prior art references relied upon in the respective rejections fail to
cure the deficiencies of Zimmerman and Good. App. Br. 24-- 25, 29-31.
The Appellant additionally argues that the Examiner fails to provide a valid
rationale to modify Zimmerman with the teachings of Good. Id. at 16-24.
The Examiner finds that Good determines an amount of nitrogen
applied or to be applied to obtain a desired crop yield using a genetically
eligible subject matter found in "July 2015 Update: Subject Matter
Eligibility," 80 Fed. Reg. 45429 (July 30, 2015), and in "2014 Interim
Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec.
16, 2014), which supplements 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.
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Application 12/518,095
modified version of a plant, and also that the release of greenhouse gas
emissions is a function of applied nitrogen. Final Act. 4 (citing Good i-fi-1 4,
213-216). The Examiner also finds that Zimmerman discloses
commodifying environmental attributes, i.e., environmental benefit credits
(EBCs ), and, because the release of gaseous nitrogen components from
fertilizers also exacerbates acid rain and the greenhouse gas effects such that
there is a need for plants that are capable of utilizing nitrogen more
efficiently, a skilled artisan would be motivated to modify the method of
Zimmerman by incorporating the teachings of Good to lessen nitrogen use.
Id. at 4--5 (citing Zimmerman Abstract, i-fi-f 16, 22, 27-33, 36-37, 39, 45, 92,
Good i-fi-14, 213-216). The Examiner notes that the claims are not tied to a
specific equation or means of calculating greenhouse gas emissions. Id. at
33.
Upon consideration of the evidence on this record in light of the
arguments advanced by the Appellant, we find that the Appellant has not
identified reversible error in the Examiner's determination that claim l is
unpatentable under 35 U.S.C. § 103(a). Accordingly, we sustain the
Examiner's rejection of claim 1 for the reasons set forth in the Final Action
and the Answer. We add the following primarily for emphasis.
Claim 1 includes the step of "determining an amount of greenhouse
gas emission based on the determined amount of nitrogen applied or to be
applied." Good discloses that the applied nitrogen from fertilizers
exacerbates greenhouse gas emissions, and its invention is directed to
modified plant species that have increased nitrogen use efficiencies. Good
i-fi-13--4. We do not find the Appellant's argument that the prior art does not
teach the step of determining greenhouse gas emissions based on the amount
of nitrogen applied to be persuasive because Good recognizes a known
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Application 12/518,095
relationship between an amount of applied nitrogen and greenhouse gas
emissions. Additionally, Zimmerman teaches commodifying environmental
attributes impacting greenhouse gas emissions, and that the management of
environmental benefit credits includes, for instance, "improved fertilizer
management." Zimmerman iii! 16, 26. We, therefore, also do not find the
Appellant's argument that there is insufficient rationale for one of ordinary
skill in the art to modify the teachings of Zimmerman with Good to be
persuasive, because Good is similarly directed to methods to reduce nitrogen
emissions (and increase environmental benefits).
We, therefore, sustain the rejections of claims 1-3, 8-10, 12-13, 17,
18, 31-33, 38--41, and 54 under 35 U.S.C. § 103(a).
Claim 14
Claim 14 includes the limitation, in relevant part, of "receiving seed
and/or license to technology from an entity in exchange for rights to at least
a portion of the calculated amount of greenhouse gas emission credit." The
Examiner finds that Zimmerman does not teach receiving seed and/or
license to technology from an entity in exchange for a portion of the
calculated amount of greenhouse gas emission credit, but Sowinski discloses
the use of ipCredits for improvements in a gas utility and one of ordinary
skill in the art would have been motivated to modify Zimmerman for such an
exchange. Ans. 11-12; Final Act. 11-12 (citing Sowinski 34:27-39, 8:65-
67). The Appellant argues that a natural gas filter of Sowinski is not a seed
or a license to technology, as required in the claim. App. Br. 26.
Upon consideration of the evidence on this record in light of the
arguments advanced by the Appellant, we find that the Appellant has not
identified reversible error in the Examiner's determination that claim 14 is
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Application 12/518,095
unpatentable under 35 U.S.C. § 103(a). Accordingly, we sustain the
Examiner's rejection of claim 14 for the reasons set forth in the Final Action
and the Answer, adding that a skilled artisan would recognize both seeds and
licenses to technology as different types of the same kind of goods of
Sowinski, namely, environmental assets, and further, that Sowinski teaches
the exchange of these goods in a form known as ipCredits.
We, therefore, sustain the rejection of claim 14 under 35 U.S.C.
§ 103(a).
Claim 15
Claim 15 includes the limitation, in relevant part, of "transferring the
at least a portion of the calculated amount of greenhouse gas emission
credit to the entity, wherein the entity conveys the at least a portion of the
amount of greenhouse gas emission credit to the one or more potential
buyers through the electronic trading market." The Examiner finds that
Walsh discloses the transfer of at least a portion of the greenhouse gas
emission credit by an entity to one or more potential buyers, because it
teaches resale, i.e. allows for reselling all or a portion of the voucher to at
least one other buyer without restriction. Ans. 22-23; Final Act. 12-13
(citing Walsh i-fi-f 15, 28, 39). The Appellant argues that Walsh does not
identify the entity to which the credits are conveyed, aside from "a buyer
who desires" them. App. Br. 27 (citing Walsh i-f 15).
Upon consideration of the evidence on this record in light of the
arguments advanced by the Appellant, we find that the Appellant has not
identified reversible error in the Examiner's determination that claim 15 is
unpatentable under 35 U.S.C. § 103(a) based upon the Examiner's findings.
There is no requirement in the claim that the entity to which the credits are
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Application 12/518,095
conveyed has to be specifically identified, and Walsh discloses "reselling all
or a portion of the voucher to at least one other buyer without restriction."
Walsh ,-r 15.
We, therefore, sustain the rejection of claim 15 under 35 U.S.C.
§ 103(a).
Claim 16
Claim 16 includes the limitation, in relevant part, "transferring at
least a portion of proceeds received from trading the calculated amount of
greenhouse gas emission credit using the electronic trading market to the
entity, wherein the at least a portion of proceeds corresponds to the at least
a portion of the calculated amount of greenhouse gas emission credit." In
the rejection of claim 16, the Examiner acknowledges that Zimmerman
alone does not explicitly disclose this limitation and relies upon
Copenhaver's disclosure of royalty payments to teach transferring a portion
of proceeds received from trading greenhouse gas emission credits. Final
Act. 13 (citing Copenhaver i-fi-1 31, 83). The Examiner also finds that the
skilled artisan would have been motivated to modify Zimmerman by
incorporating Copenhaver's royalty payments, because the artisan would
recognize an emissions credit as equivalent to a fee from a new crop, where
any one of a variety of methods, including royalty payments, are utilized to
receive a fee for the new crop. Id. at 13-14. The Appellant argues that a
royalty payment based on the sales price of a new crop is not the same as
proceeds received from trading the calculated amount of greenhouse
emissions credit. App. Br. 28.
Upon consideration of the evidence on this record in light of the
arguments advanced by the Appellant, we find that the Appellant has not
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Application 12/518,095
identified reversible error in the Examiner's determination that claim 16 is
unpatentable under 35 U.S.C. § 103(a). Accordingly, we sustain the
Examiner's rejection of claim 16 for the reasons set forth in the Final Action
and the Answer. We add the following primarily for emphasis.
The Appellant argues the references separately when they should be
considered in combination. One cannot show nonobviousness by attacking
references individually where the rejections are based on combinations of
references. See In re Keller, 642 F.2d 413, 426 (CCPA 1981); In re Merck
& Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Per Copenhaver, a royalty
payment represents one of a variety of means of payment which, when
incorporated into Zimmerman's market system based on environmental
commodities that may include greenhouse gas emission credits, teaches the
elements of claim 16.
We, therefore, sustain the rejection of claim 16 under 35 U.S.C.
§ 103(a).
Nonstatutory Obviousness-Type Double Patenting
As noted above, the Examiner provisionally rejected instant claims 1,
2, 8-10, 13-18, 31-32, and 38--41 under nonstatutory obviousness-type
double patenting as unpatentable over co-pending Application 12/518,096 in
view of Zimmerman. No patent has issued from that application. The
Appellant presents no arguments addressing the Examiner's provisional
nonstatutory obviousness-type double patenting rejection of these claims.
As this is a provisional rejection, it is premature for the Board to address it.
See In re Monda, 95 USPQ2d 1884, 1885 (BP AI 2010) (precedential).
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Application 12/518,095
SUMMARY
The rejections of claims 1-3, 8-10, 12-18, 31-33, 38--41, and 54
under 35 U.S.C. § 103(a) are affirmed.
We do not reach the rejection of claims 1, 2, 8-10, 13-18, 31-32, and
38--41 on the grounds of obviousness-type double patenting.
AFFIRMED
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