Ex Parte Rosa et al

Patent Trial and Appeal Board

Apr 28, 2017

13296463 (P.T.A.B. Apr. 28, 2017)

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.
13/296,463 11/15/2011 Uriel Rosa TRMB-2954 1556
112877 7590 05/02/2017
Kilpatrick Townsend & Stockton LLP
Trimble Navigation Limited
Mailstop: IP Docketing - 22
1100 Peachtree Street, Suite 2800
Atlanta, GA 30309
EXAMINER
STERRETT, JONATHAN G
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte URIEL ROSA, ARTHUR F. LANGE, and
ROBERT J. LINDORES
Appeal 2015-0082311
Application 13/296,4632
Technology Center 3600
Before MURRIEL E. CRAWFORD, BRADLEY B. BAYAT, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1—
6, 8—12, and 14—24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision considers Appellants’ Appeal Brief (“Appeal Br.,” filed
Apr. 6, 2015) and Reply Brief (“Reply Br.,” filed Sept. 15, 2015), as well as
the Examiner’s Final Office Action (“Final Act.,” mailed Dec. 4, 2014) and
Answer (“Ans.,” mailed July 15, 2015).
2 Appellants identify Trimble Navigation Limited as the real party in
interest. Appeal Br. 1.
Appeal 2015-008231
Application 13/296,463
CLAIMED SUBJECT MATTER
The claimed invention relates to “measuring and monitoring crop
yield.” Spec. 11. Claims 1, 10, and 16 are the independent claims on
appeal. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method for measuring crop yield, said method
comprising:
collecting a crop from a first tree in a field into a collection
device;
obtaining position information from a navigation satellite
system location device for the first tree in the field;
measuring a weight of the crop collected from the first
tree;
repeating the collecting, obtaining position information
and measuring the weight of the harvest for at least a second tree
in the field; and
generating a user interactive crop output report, the crop
output report providing crop yield and location information for
the first and at least the second tree in the field.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal is:
Parshall et al US 3,142,603 July 28, 1964
Mehusetal. US 7,694,589 B2 Apr. 13,2010
J.K. Schueller et al., Low-cost automatic yield mapping in hand-harvested
citrus, 23 Computers and Electronics in Agric. 145 (1999) (“Schueller”).
J. M. Maja and R. Ehsani, Development of a yield monitoring system for
citrus mechanical harvesting machines, 11 Precision Agric. 475 (2010)
(“Maja”).
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Application 13/296,463
REJECTIONS
Claims 1—6, 8—12, and 14—24 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Claims 1—6, 8—12, and 14—24 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite.3
Claims 1, 2, 8—10, and 14—24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schueller.
Claims 3, 4, 6, 11, and 12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Schueller and Maja.
Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Schueller, Maja, Mehus, and Parshall.
ANALYSIS
Written Description
The Examiner finds that the claim limitations directed to weighing a
crop from an individual plant, developing an estimate based on sampling,
and location determining signals lack written description support.
Final Act. 7—13; Ans. 5—12. In particular, the Examiner finds these
limitations are insufficiently supported because the disclosure does not
adequately explain how to measure the weight of the crop from an individual
plant (Ans. 6—12), how to develop an estimate based on sampling
3 The heading of the rejection includes claim 7 (Final Act. 14), but claim 7
has been canceled (Amendment filed Nov. 14, 2014). As such, we
understand the inclusion of claim 7 in the heading of the rejection is a
typographical error, which is consistent with Appellants’ understanding of
the claims on appeal (Appeal Br. 17).
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Application 13/296,463
(Final Act. 13), or how the yield management system interacts with location
determining signals (id.).
Appellants argue that there is written description support for these
limitations. Appeal Br. 5—7; Reply Br. 1—5. We agree with Appellants.
The first paragraph of 35 U.S.C. § 112 contains a written description
requirement that is separate and distinct from the enablement requirement.
AriadPharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1344 (Fed. Cir. 2010)
(en banc). The test for sufficiency of the written description requirement is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date. Id. at 1351 (citations omitted).
Here, the disputed limitations are in the original claims (Spec. 25—28),
and in particular, independent claim 1 is an original claim. We note that an
original claim may provide literal support for itself. See In re Anderson, 471
F.2d 1237, 1238—39 (CCPA 1973) (unamended original claim is a part of the
original disclosure). Furthermore, as Appellants point out, the Specification
similarly describes these limitations. Appeal Br. 5 (citing Spec. 25, 32—
33, 36, 49—52, 72, 85—86, Figs. 2A—D). For example, the Specification
discloses a weighing mechanism 225 that is used to determine the weight of
the crop at a given location (id. 132), and the Specification describes a
location as a first tree (id. Ill, Fig. 4). The Specification also discloses that
the data from weighing mechanism 225 is stored in a database and later
reviewed in conjunction with the location information to determine crop
yield per location information. Id. | 52. The Specification further describes
that the system utilizes a navigation satellite system including a location
determiner GNSS 680 for determining the position information for a
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Application 13/296,463
collected crop. Id. Tflf 45—50. Accordingly, we find a person of ordinary
skill in the art would appreciate that Appellants had possession of the
claimed invention from the original disclosure.
In view of the foregoing, we do not sustain the Examiner’s rejection
of claims 1—6, 8—12, and 14—24 under 35 U.S.C. § 112, first paragraph.
Indefiniteness
We agree with Appellants that the Examiner’s rejection is improper
for not applying the standards for indefmiteness. Appeal Br. 8—9. The
requirements of the first and second paragraphs of 35 U.S.C. § 112 are
separate and distinct. If a description or the enabling disclosure of a
specification is not commensurate in scope with the subject matter
encompassed by a claim, that fact alone does not render the claim imprecise
or indefinite; rather, the claim is based on an insufficient disclosure and
should be rejected under 35 U.S.C. § 112, first paragraph. In re Borkowski,
422 F.2d 904 (CCPA 1970). Here, the Examiner’s determination that the
claims are indefinite is premised solely on the Specification’s purported
inadequate description. Final Act. 14. We, therefore, do not sustain the
rejection of claims 1—6, 8—12, and 14—24 under 35 U.S.C. § 112, second
paragraph.
Obviousness
In regard to independent claim 1, the Examiner finds that Schueller
discloses the claimed invention, except that Schueller does not teach
performing the recited steps for every tree. Final Act. 17. The Examiner
further finds that Schueller teaches the desirability to do so and determines
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that it would have been obvious to modify the teachings of Schueller to
measure the output of every tree to provide “the predictable result of giving
orchard planners information on how to effectively manage an orchard by
being able to focus on the unique needs of individual trees.” Id.
Although Schueller teaches all of the elements of independent claim 1
and suggests the modification to account for individual trees, Appellants
argue that it would not have been obvious to modify Schueller to map the
yield of individual trees because Schueller teaches that it cannot do so.
Appeal Br. 11—13; Reply Br. 6. Appellants also assert that Schueller shows
a long-felt need for “individualized tree yield measurement.” Appeal Br. 11.
We do not find Appellants’ arguments persuasive.
Beginning with the alleged inability to account for individual trees,
we note Schueller does not expressly state that mapping the yield of
individual trees cannot be done. Schueller, rather, discloses a system that
does not do so. Namely, Schueller teaches that the disclosed system is “low-
cost, simple, and reliable,” and that one of drawbacks is that it does not map
the yield of individual trees. Schueller 150. Moreover, in describing the
state of the art, Schueller also teaches: “When citrus harvest is mechanized,
individual tree yields will be available for mapping. The most likely
scenario is that the weight of recovered fruit from each tree will be measured
after the machine has finished removing the fruit from that tree.”
Schueller 152. Schueller, thus, does not support Appellants’ assertion that
mapping the yield of individual trees could not be done.
Turning to Appellants’ contention regarding long-felt need, factual
inquiries for an obviousness determination include secondary considerations
based on evaluation and crediting of objective evidence of nonobviousness,
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such as long-felt need. Graham v. John Deere Co., 383 U.S. 1, 17—18
(1966). Establishing long-felt need requires objective evidence that an art
recognized problem existed in the art for a long period of time without
solution. In re Gershon, 372 F.2d 535, 539 (CCPA 1967).
Here, Appellants are relying on Schueller as evidence of the long-felt
need of “individualized tree yield measurement.” Appeal Br. 11. Schueller,
however, actually suggests a solution to the alleged problem of the ability to
account for individual trees, namely, mechanizing a harvest and weighing
the recovered fruit from each tree after the machine has finished removing
the fruit from that tree. Schueller 152.
Furthermore, to be given substantial weight, the proponent must
demonstrate a nexus between the merits of the claimed invention and the
evidence of secondary considerations. In re GPACInc., 57 F.3d 1573, 1580
(Fed. Cir. 1995). The cited portion of Schueller does not mention
“individualized tree yield management,” as Appellants assert.
Appeal Br. 11. Rather, the cited portion of Schueller teaches “[t]he need to
determine the accuracy of yield maps and other precision agriculture
operations.” Schueller 151. Appellants do not explain how this general
need for a more accurate system suggests a long-felt need to account for
individual trees recited in the claims. To the contrary, the general need for a
more accurate system is universal and technology-independent, which
suggests obviousness, not nonobviousness. See Dystar Textilfarben GmbH
& Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir.
2006) (“ [W]e have repeatedly held that an implicit motivation to combine
exists . . , when the ‘improvement’ is technology-independent and the
combination of references results in a product or process that is more
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desirable, for example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient.”).
Considering the totality of the evidence, including evidence of
obviousness and nonobviousness, Appellants have not persuaded us that the
Examiner erred in determining it would have been obvious to modify the
crop yield mapping system of Schueller to account for individual trees.
Accordingly, we sustain the Examiner’s rejection of independent claim 1.
Appellants make the same arguments for independent claims 10 and 16
(Appeal Br. 10), and we sustain the Examiner’s rejection of these claims for
the same reasons as independent claim 1. Appellants do not present separate
arguments for the dependent claims 2—6, 8, 9, 11, 12, 14, 15, and 17—24
(Appeal Br. 14), and we similarly sustain the rejection of these claims.
DECISION
The Examiner’s decision to reject claims 1—6, 8—12, and 14—24 under
35 U.S.C. 1112, first paragraph, is reversed.
The Examiner’s decision to reject claims 1—6, 8—12, and 14—24 under
35 U.S.C. 1112, second paragraph, is reversed.
The Examiner’s decision to reject claims 1—6, 8—12, and 14—24 under
35 U.S.C. 1103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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