Bassett, Douglas E. et al.

Patent Trials and Appeals Board

Nov 25, 2019

14356846 - (D) (P.T.A.B. Nov. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/356,846 05/07/2014 Douglas E. Bassett JR.
26111 7590 11/27/2019
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK A VENUE, N.W.
WASHINGTON, DC 20005
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.
3225.0230002 1708
EXAMINER
DEJONG, ERIC S
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
11/27/2019 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):
e-office@stemekessler.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DOUGLAS E. BASSETT JR. and DANIEL R. RICHARDS
Appeal 2018-007839
Application 14/356,846
Technology Center 1600
Before DONALD E. ADAMS, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner's decision to reject claims 1, 2, 5, 7, 9, 11-14, and 16-23. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 We use the word "Appellant" to refer to "applicant" as defined in 37
C.F .R. § 1.42. Appellant identifies the real party in interest as Ingenuity
Systems, Inc .... a wholly-owned subsidiary of QIAGEN GmbH
(Appellant's December 29, 2017 Appeal Brief (Appeal Br.) 3.
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Application 14/356,846
STATEMENT OF THE CASE
Appellant's disclosure relates to "[m]ethods and systems for filtering
variants in data sets comprising genomic information" (Spec. ,r 3).
Appellant's claim 1 is representative and reproduced below:
1. A computer system, comprising:
a database of biological information, wherein the
database of biological information is a knowledge base
structured with an ontology, wherein the biological information
is represented, within the knowledge base, as nodes connected
by edges, each edge representing an interaction between two
nodes, wherein the nodes represent biological entities, and
wherein two biological entities connected by one edge are one
hop away from each other; and
a computer configured to implement a biological context
filter by:
receiving a data set comprising variants, wherein
the data set composes variant data from one or more samples
from one or more individuals;
communicating with the database of biological
information;
establishing associations between the variants,
from the received data set, and the biological information
selected by a user, wherein each association includes a
relationship defined by one or more hops between a variant and
the selected biological information; and
filtering the received data set based on the
established associations for variants associated with the selected
biological information.
(Appeal Br. 21.)
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Grounds of rejection before this Panel for review:
Claims 1, 2, 5, 7, 9, 11-14, and 16-23 stand rejected under the written
description provision of 35 U.S.C. § 112, first paragraph.
Claims 1, 2, 5, 7, 9, 11-14, and 16-23 stand rejected under 35 U.S.C.
§ 112, second paragraph.
Claims 1, 2, 5, 7, 9, 11-14, and 16-23 stand rejected under 35 U.S.C.
§ 101.
Written Description and Definiteness:
ISSUES
Does the preponderance of evidence on this record support
Examiner's finding that Appellant's Specification fails to provide written
descriptive support for the claimed invention?
Does the preponderance of evidence support Examiner's conclusion
that Appellant's claims are indefinite?
ANALYSIS
"Construing a means-plus-function claim term is a two-step process.
The court must first identify the claimed function. . . . Then, the court must
determine what structure, if any, disclosed in the specification corresponds
to the claimed function." Williamson v. Citrix Online, LLC, 792 F.3d 1339,
1351 (Fed. Cir. 2015) (internal citation omitted).
Examiner finds that Appellant's claims "recite the use of a generic
computer in the form of a configured computer defined only by the expected
functions that it is to perform. This is the only structure recited in
[Appellant's] claims and therefore invokes an interpretation under 35
[U.S.C.] 112, 6th paragraph" (Ans. 4). In this regard, Examiner finds that
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Appellant's Specification "fails [to] specify any structure corresponding to
the means as instantly claimed" (id.). Thus, Examiner finds that because
Appellant's Specification lacks "any specific definition that limits the
claimed functions to a specifically described 'configured' system
[Appellant] has failed to demonstrate that [it] was in possession of the full
scope of the claimed invention at the time the application was filed" (id.).
Having identified a means-plus-function claim term in Appellant's
claimed invention, Examiner looks to Appellant's Specification and finds
that Appellant's Specification "provide[s] a sufficient prose description
regarding how the special purpose functions are achieved by a dedicated,
specifically configured computer system" (Ans. 1 O; see Appeal Br. 17-18
( Appellant contends that although the claimed "functions can be achieved by
any general purpose computer without special programming," "even if
additional structure were deemed necessary, such structure is described in
the [S]pecification in the form of process steps (e.g., algorithms).") (citing
Spec. 2 ,r,r 149-162, 179-182, 199-228, 237, 258-264, 269, and 271-323)).
Nonetheless, Examiner maintains the written description rejection on
this record because "the claims are necessarily unbounded to a[] specific or
particular configurations" and the "rejection would be overcome if the
instant claims were amended to be limited to those exemplary embodiments
described in the [S]pecification" (id.). Stated differently, although Examiner
agrees that Appellant's Specification provides adequate corresponding
structure to cover the claim limitation expressed in means-plus-function
language, Examiner maintains the rejection because Appellant has not
2 Appellant's May 7, 2014 Specification.
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amended the claims to recite the specific structure disclosed in Appellant's
Specification. Examiner, however, identifies no authority to support
Examiner's assertion that Appellant's claims must recite the specific
structure corresponding to the means-plus-function language of the claims.
To the contrary, we find that 35 U.S.C. § 112, sixth paragraph states that
"[ a ]n element in a claim for a combination may be expressed as a means or
step for performing a specified function without the recital of structure,
material, or acts in support thereof, and such claim shall be construed to
cover the corresponding structure, material, or acts described in the
specification and equivalents thereof' ( emphasis added).
In sum, notwithstanding Examiner's assertion to the contrary, an
element of a claim may be expressed as a means or step for performing a
specified function without the recital of structure, material, or acts in support
thereof, but is instead constructed to cover the corresponding structure
described in Appellant's Specification or equivalents thereof. On this
record, Examiner clearly acknowledged that Appellant's Specification
provided sufficient corresponding structure to satisfy the means-plus-
function element of Appellant's claimed invention. Thus, Examiner's
written description rejection is reversed.
The definiteness rejection on this record is based on the same rational
applied in Examiner's written description analysis and, therefore, fails for
the same reasons set forth above (see Ans. 6-7 and 10).
CONCLUSION
The preponderance of evidence on this record fails to support
Examiner's finding that Appellant's Specification fails to provide written
descriptive support for the claimed invention. The rejection of claims 1, 2,
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5, 7, 9, 11-14, and 16-23 under the written description provision of35
U.S.C. § 112, first paragraph is reversed.
The preponderance of evidence also fails to support Examiner's
conclusion that Appellant's claims are indefinite. The rejection of claims 1,
2, 5, 7, 9, 11-14, and 16-23 under 35 U.S.C. § 112, second paragraph is
reversed.
Subject Matter Eligibility:
ISSUE
Does the preponderance of evidence of record support Examiner's
finding that Appellant's claimed invention is directed to patent ineligible
subject matter?
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "'[l]aws of nature, natural phenomena, and abstract
ideas"' are not patentable. E.g., Alice Corp. v. CLS Bank Int'!, 573 U.S.
208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
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risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219--20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Gottschalk, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Gottschalk and Parker); see, e.g., id. at 187 ("It is
now commonplace that an application of a law of nature or mathematical
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formula to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must 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, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (January 7, 2019) ("Revised Guidance"). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
See 84 Fed. Reg. 54--55. Only if a claim (1) recites a judicial exception and
(2) does not integrate that exception into a practical application, do we then
look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
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(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See 84 Fed. Reg. 51.
ANALYSIS
Applying the Revised Guidance to the facts on this record, we find
that Appellant's claims are not directed to patent-eligible subject matter.
The Revised Guidance instructs us first to determine whether any
judicial exception to patent eligibility is recited in the claim. The Revised
Guidance identifies three judicially-excepted groupings identified by the
courts as abstract ideas: (1) mathematical concepts, (2) certain methods of
organizing human behavior such as fundamental economic practices, and (3)
mental processes.
Appellant's independent claim 1 includes the following steps:
establishing associations between the variants, from the
received data set, and the biological information selected by a
user, wherein each association includes a relationship defined
by one or more hops between a variant and the selected
biological information; and
filtering the received data set based on the established
associations for variants associated with the selected biological
information.
( Appeal Br. 21.) According to Appellant's claimed invention, the "received
data set" "comprises variant data from one or more samples from one or
more individuals" (id.). In addition, Appellant's claimed invention states
that "biological information is represented, within [a] knowledge base, as
noted connected by edges, each edge representing an interaction between
two notes, wherein the nodes represent biological entities, and wherein two
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biological entities connected by one edge are one hop away from each other"
(id.).
Thus, Appellant's claim 1 comprises both mathematical concepts and
mental processes under the Revised Guidance, wherein existing data is
manipulated to generate additional data by establishing associations between
variants in existing data and then organizing, or filtering, the existing data
based on the established associations. Therefore, Appellant's claim 1 recites
abstract ideas. See Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1340 (Fed. Cir. 2017) ("[A]n invention directed to
collection, manipulation, and display of data was an abstract process"); see
also Digitech Image Techs., LLC. v. Elecs. For Imaging, Inc., 758 F.3d
1344, 1351 (Fed. Cir. 2014) ("Without additional limitations, a process that
employs mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible"); CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("The mere
manipulation or reorganization of data ... does not satisfy the
transformation prong").
Having determined that Appellant's claim 1 recites an abstract idea, a
judicial exception, the Revised Guidance directs us to next consider whether
the claims integrate the judicial exception into a practical application. On
this record, Appellant's claimed system does not integrate the judicial
exception into a practical application.
In addition to the abstract ideas discussed above, Appellant's claimed
system comprises a database of biological information and a computer
configured to implement a biological context filter (Appeal Br. 21 ).
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Appellant's computer, i.e. processor, is configured to, inter alia,
receive a data set comprising variants from one or more samples from one or
more individuals and communicate with the database of biological
information (id.). Receiving, i.e. collecting, data is an abstract process. See
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d at 1340
("[ A ]n invention directed to collection, manipulation, and display of data
was an abstract process"). In addition, "generic computer components such
as an 'interface,' 'network,' and 'database' ... do not satisfy the inventive
concept requirement." Mortgage Grader, Inc. v. First Choice Loan Services
Inc., 811 F.3d 1314, 1324--1325 (Fed. Cir. 2016).
We recognize Appellant's contention that its
claim 1 contains an "inventive concept" in the claim's
combination of a variant filter with a specific type of database
structure for biological information. This design focuses the
attention of a researcher or clinician on potentially relevant
genomic variants. . . . The inventive concept herein harnesses
this technical feature of database technology in a variant
filtering system by associating variant data from samples of one
or more individuals with biological information in the database
of biological information.
(Appeal Br. 14 (citing Spec. ,r 2).) Stated differently, Appellant contends
that "the claimed improvement is allowing computers to produce 'filtered
results' of variants that previously could only be produced by human
operators" (id. at 10). We are not persuaded. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d at 1373 ("a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 101. ").
Appellant further contends that "another claimed improvement is
being able to filter a collection of variant information that uses inconsistent
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terms to describe a property which may be associated with a variant. Thus,
the claimed improvement relates to an improvement in accuracy and effect
provided by computer" (id. at 10-11). Stated differently, as is done in the
human mind, Appellant's algorithm is capable of recognizing different terms
that may be used to describe similar properties. This is again "merely an
abstract idea [that] is not patent-eligible under§ 101." CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d at 1373.
For the foregoing reasons, we find that Appellant's claim 1 is, at best,
similar to the claims at issue in Mayo, which involved acquiring patient
information, but did not require any particular use of the acquired
information. See Mayo, 566 U.S. 66, 79; cf Vanda Pharms. Inc. v. West-
Ward Pharms. Int'! Ltd., 887 F.3d 1117, 1135 (Fed. Cir. 2018) (The claims
at issue in Vanda were not directed to an abstract idea, under Alice step one,
because they involved using the acquired data to direct a treatment
program).
Therefore, on this record, we conclude that the judicial exception set
forth in Appellant's claim 1 is not integrated into a practical application.
Having determined that the judicial exception is not integrated into a
practical application, the Revised Guidance requires us to evaluate the
additional elements individually and in combination to determine whether
they provide an inventive concept, such as a specific limitation beyond the
judicial exception that is not well-understood, routine, conventional in the
field, or simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. See Revised Guidance, 84 Fed. Reg. at 51.
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Appellant contends that Examiner's assertion that Appellant's
"claimed computer system is 'simply being used in the most routine and
conventional manner that computer[ s] are used in general practice; as the
convenient vehicle serving as a computational workhorse for performing
numerous and complicated [sic] associated with abstract analysis of data,"'
fails to meet the evidentiary standard set forth in Berkheimer v. HP Inc., 881
F.3d 1360 (Fed. Cir. 2018) (see Reply Br. 1 (alteration original) (citing Ans.
9)). We are not persuaded. As Appellant explains, "the claimed functions
of 'receiving,' 'communicating,' 'establishing,' and 'filtering' are
coextensive with the structure disclosed, e.g. a computer system. These
functions can be achieved by any general purpose computer without special
programming" (Appeal Br. 17 (emphasis added)). See Riverwood-Int'!
Corp. v. R.A. Jones & Co., Inc., 324 F.3d 1346, 1354 (Fed. Cir. 2003)
("Valid prior art may be created by the admissions of the parties").
Appellant further contends that Examiner failed to establish an
evidentiary basis on this record to support a finding that "a 'database of
biological information' represented 'as nodes connected by edges, each edge
representing an interaction between two nodes, wherein the nodes
represented biological entities, and wherein two biological entities connected
by one edge are one hop away from each other' is well-understood, routine,
and conventional" or "that it is well-understood, routine, and conventional to
'establish[] associations between[] variants, from [a] received data set, and
the biological information,' and 'filter[] the received data set based on the
established associations for variants associated with the selected biological
information"' (Reply Br. 3 (alteration original); see also Appeal Br. 11-12).
In this regard, we recognize that Appellant's Specification described
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databases and provided citations to a number of patents and patent
publications describing databases known to those of ordinary skill in this art
(see, e.g., Spec. ,r,r 179-182; see generally Transcript3 3:10-4:8). During
Appellant's October 2, 2019 Oral Hearing Appellant's counsel
acknowledged that Appellant's Specification "describe[s] types of
databases," but contended that Appellant organized its database differently
from other known databases (Transcript 3: 14--15). Specifically, Appellant's
counsel explained
[i]n this case [Appellant is] arranging biological entities[,
i.e.] ... genes that are represented in a graph-based format and
then [Appellant] establish[ es] associations between genetic
variants and those biological entities based on a number of
hops, that is the traversal through the graph and those number
of hops represent the degree and type of associations that would
give you indications of whether some genetic variant is
clinically relevant.
(Id. at 11. 15-21; see also id. at 3:22--4:8 and 5:22-6:4.) Appellant's counsel,
however, acknowledged that "a hop is a term of art" "and edges ... and so
forth, yes would be known I guess as a common data structure" (id. at 4: 16-
20 (emphasis added)). See Riverwood-Int'! Corp. v. R.A. Jones & Co., Inc.,
324 F.3d at 1354 ("Valid prior art may be created by the admissions of the
parties"). Thus, we find that notwithstanding Appellant's contention to the
contrary, common database structures that are within the scope of
Appellant's database were well-known, routine, conventional in this art (cf
Appeal Br. 12-15; Reply Br. 3).
3 Transcript of Appellant's October 2, 2019 Oral Hearing, entered into the
record October 15, 2019.
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For the foregoing reasons, we are not persuaded by Appellant's
contention that its well-known, routine, conventional database is similar to
"the database structure in [Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016)]" (Appeal Br. 8). In contrast to Appellant's contention, the
Enfzsh Court held that claims to a data storage and retrieval system for
computer memory was not directed to an abstract idea because they involved
more than storing, organizing, and retrieving memory in a logical table.
Enfzsh, 822 F.3d at 1336-37. The claims in Enfzsh were directed to a self-
referential table ("means for configuring" algorithm) that functions
differently than conventional database structures. Id. at 1337. The
unconventional database structure, or technological improvement, in Enfzsh
provided increased flexibility, faster search times, and smaller memory
requirements. Id. In contrast, as discussed above, Appellant's claims
involve a well-known, routine, conventional, database operating on a generic
computer. The same is true of Appellant's contention that its "independent
claim 1 is patent-eligible under step one for the same reasons that the claims
in [McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314--15
(Fed. Cir. 2016)] were found patent-eligible" (Appeal Br. 8; see id. at 8-10).
See, McRO, 837 F.3d 1314--15 (finding claims not abstract because they
"focused on a specific asserted improvement in computer animation").
As Appellant's counsel explained, in contrast to the type of
technological problem solved in Enfish, Appellant's "invention solves the
technological problem of how to enable automation on a computer of a
previously subjective manual process" (id. at 4:23-5:2; see also Appeal Br.
8 (Appellant contends that "[t]he claimed invention provides specific
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benefits over conventional filtering mechanisms, including reducing the
amount of variant information that needs to be processed.") (citing Spec.
,r 2); Appeal Br. 14--15 (Appellant's "claim 1 contains an 'inventive
concept' in the claim's combination of a variant filter with a specific type of
database structure for biological information")). We note, however, that
"merely 'configur[ing]' ," as here, "generic computers in order to 'supplant
and enhance' an otherwise abstract manual process is precisely the sort of
invention that the Alice Court deemed ineligible." Credit Acceptance Corp.
v. Westlake Servs., 859 F.3d 1044, 1056 (Fed. Cir. 2017) (citing Alice Corp.
Pty. Ltd. v. CLS Banklnt'l, 573 U.S. 208, 220-25 (2014).
"[M]erely adding computer functionality to increase the speed or
efficiency of the process does not confer patent eligibility on an otherwise
abstract idea." See Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1370 (Fed. Cir. 2015). Therefore, we are not persuaded by
Appellant's contention that the well-known, routine, conventional "database
structure of the claimed invention ... increases the speed and scalability of
processing compared to conventional filtering mechanisms" (Appeal Br. 8).
Appellant contends:
Here, claim 1 contains an "inventive concept" in the claim's
combination of a variant filter with a specific type of database
structure for biological information. This design focuses the
attention of a researcher or clinician on potentially relevant
genomic variants. (Specification, ,r [0002].) The inventive
concept herein harnesses this technical feature of database
technology in a variant filtering system by associating variant
data from samples of one or more individuals with biological
information in the database of biological information.
(Appeal Br. 14.) Appellant further contends that its "specific method of
filtering is not well-understood, routine, or conventional is evidence by the
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lack of any prior art being found to render it obvious or not novel" (id. at
15). We are not persuaded.
Initially, we note that "[t]he 'novelty' of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-
89 (1981) ( emphasis added).
Further, as discussed above, the collection (i.e. receipt) and
manipulation (i.e. filtering) of data is an abstract process. See Intellectual
Ventures I LLC, 850 F.3d at 1340 ("an invention directed to collection,
manipulation, and display of data was an abstract process"); see also
CyberSource Corp., 654 F.3d at 1375 ("The mere manipulation or
reorganization of data ... does not satisfy the transformation prong");
Digitech Image Techs, LLC v. Elec.for Imaging, Inc., 758 F.3d 1344, (Fed.
Cir. 2014) ("Without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to generate
additional information is not patent eligible. 'If a claim is directed
essentially to a method of calculating, using a mathematical formula, even if
the solution is for a specific purpose, the claimed method is nonstatutory. "')
( citation omitted).
For the foregoing reasons, we find that Appellant's claimed invention
is not patent eligible.
CONCLUSION
The preponderance of evidence of record supports Examiner's finding
that Appellant's claimed invention is directed to patent ineligible subject
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matter. The rejection of claim 1 under 35 U.S.C. § 101 is affirmed. Claims
2, 5, 7, 9, 11-14, and 16-23 are not separately argued and fall with claim 1.
DECISION SUMMARY
Claims 35 U.S.C. § Basis Affirmed Reversed
Reiected
1, 2, 5, 7, 9, 112 if 1 Written 1,2,5,7,9,
11-14, and Description 11-14, and
16-23 16-23
1, 2, 5, 7, 9, 112 if 2 Indefiniteness 1,2,5,7,9,
11-14, and 11-14, and
16-23 16-23
1, 2, 5, 7, 9, 101 Subject 1,2,5,7,9,
11-14, and Matter 11-14, and
16-23 Eligibility 16-23
Overall 1,2,5,7,9,
Outcome 11-14, and
16-23
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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