Bruker Daltonik GmbH

Patent Trials and Appeals Board

Jul 23, 2020

2019006006 (P.T.A.B. Jul. 23, 2020)

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.
14/419,010 02/02/2015 Jochen Franzen P3552US00 5696
110047 7590 07/23/2020
BENOIT & COTE
560 boul. Cremazie est
Suite 300
Montreal, QUEBEC H2P 1E8
CANADA
EXAMINER
DEJONG, ERIC S
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
07/23/2020 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):
docket@benoit-cote.com
phil@benoit-cote.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOCHEN FRANZEN, STEFAN KLEPEL,
MARKUS KOSTRZEWA, and THOMAS MAIER1
Appeal 2019-006006
Application 14/419,010
Technology Center 1600
Before ERIC B. GRIMES, TAWEN CHANG, and RACHEL H.
TOWNSEND Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to
methods of recognizing microbe mixtures using mass spectrometry, which
have been rejected as ineligible for patenting. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies the real party in interest as Bruker Daltonik GmbH.
Appeal Brief filed Jan. 3, 2019 (“Appeal Br.”) 1. We use the word Appellant
to refer to “applicant” as defined in 37 C.F.R. § 1.42(a).
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STATEMENT OF THE CASE
“The routine, fast and error-free identification of many samples of
microorganisms plays an important role particularly in clinical and extra-
clinical infection diagnostics” and other fields. Spec. ¶ 2. “The identification
of bacteria by mass-spectrometric measurements has been described in
detail” in the prior art. Id. ¶ 8. “The identification is achieved by means of a
similarity analysis between a mass spectrum of the bacteria to be identified
and reference mass spectra (simply called reference spectra in the following)
of known bacteria.” Id.
A “score list [is created] with the names of the microbe strains whose
reference spectra resulted in the best similarity scores.” Id. ¶ 21. “A mixture
can be suspected when there are reference spectra in the first 20 or 30 best
hits of the score list which belong to at least two different microbe species.”
Id. ¶ 25. A “specialist must . . . assess whether the sample is a mixture of
different microbe species when several microbe species are listed in the
score list.” Id. ¶ 21. “Methods are increasingly being demanded which run
automatically as far as possible, but nevertheless have a high identification
certainty also when microbe mixtures are present.” Id. ¶ 22.
“The invention thus proposes methods which allow an automatic
evaluation program for the score lists to recognize the presence of a microbe
mixture with a relatively high degree of certainty.” Id. ¶ 50. In one
embodiment (represented by Appellant’s claim 1), “an experienced specialist
determine[s] the relationships between the microbes of all the reference
spectra in the library once, and add[s] to the library a matrix-like relationship
list . . . called an ‘exclusion list.’” Id. ¶ 32. “With the aid of this list, [a]
computer program for the evaluation of the mass spectra can then determine
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whether such a near relationship exists, and negate the presence of a mixture
when this is the case.” Id.
A second embodiment (represented by Appellant’s claim 2) “is based
on the finding that what matters is not the taxonomically determined
relationship between the microbes, but only the degree of similarity between
their reference spectra.” Id. ¶ 34. This embodiment “therefore proposes to
investigate the reference spectra of the different microbe species in the score
list in respect of their mutual similarity, for example by means of the
evaluation program for assessing the score list itself.” Id. ¶ 35. “If they are
very similar, . . . no mixture is present. If, on the other hand, the reference
spectra of the different microbe species are not similar to each other, this
indicates to the user that the sample must be a mixture.” Id.
Claims 1, 2, 6–8, and 10–13 are on appeal. Claims 1 and 2,
reproduced below, are illustrative:
1. Method for the recognition of microbe mixtures and the
mass-spectrometric identification of a microbe sample,
comprising the steps of:
providing a library of reference spectra of microbes and
an exclusion list indicative of a degree of taxonomical
relationship between the microbes of the reference spectra;
acquiring a sample spectrum of the microbe sample;
comparing the sample spectrum to the reference spectra
in the library and compiling a similarity score list of the
reference spectra that are most similar to the sample spectrum
based on a known similarity indicator;
determining, with the aid of the exclusion list, the
taxonomical relationship between two microbes, whose
reference spectra are present in the score list and which belong
to different species;
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identifying the microbe sample as a microbe mixture if
the determined taxonomical relationship is below a specified
degree; and
when a microbe mixture has been identified, performing
a mixture analysis using combination spectra.

2. Method for the recognition of microbe mixtures and the
mass-spectrometric identification of a microbe sample,
comprising the steps of:
providing a library of reference spectra of microbes;
acquiring a sample spectrum of the microbe sample;
comparing the sample spectrum to the reference spectra
and compiling a similarity score list of reference spectra that are
most similar to the sample spectrum based on a known
similarity indicator;
comparing two reference spectra of the score list whose
microbes belong to different species to determine a degree of
similarity between said two reference spectra;
identifying the microbe sample as a microbe mixture if
the similarity of said two compared reference spectra is below a
predetermined similarity threshold; and
when a microbe mixture has been identified, performing a
mixture analysis using combination spectra.

OPINION
Claims 1, 2, 6–8, and 10–13 stand rejected under 35 U.S.C. § 101
“because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without including
additional elements that are sufficient to amount to significantly more than
the judicial exception itself.” Ans. 3. The Examiner finds that “the claimed
invention only involves the abstract consideration of data, per se.” Id. at 4.
“[T]he purpose of the claims remains directed to an abstract, mathematical
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and algorithmic analysis of mass spectroscopic data for a specific purpose of
identifying the particular microbe content of a given sample.” Id.
The Examiner finds that “[n]o samples are modified by practicing the
claim[ed] analysis nor are any new physical investigative techniques
developed or applied to a microbe sample. The instant claims are not
directed to a practical application of the judicial exception.” Id. The
Examiner finds that the “final step of performing a mixture analysis using a
combination spectra . . . only provide[s] additional extra-solution activities
where combination spectra analysis may be performed.” Id. at 5. That is, the
claimed analysis of mass spectroscopic data only distill[s] out
new information pertaining to the comprehension of the
pertinence of a microbe mixture. Following [which], a
practitioner of the claimed invention is instructed to perform
additional analysis. Such results . . . in new information being
comprehended in the mind of said practitioner. As such, the
instant claims lack[] any practical application in the realms of
physical things and acts.
Id. at 9.
Appellant argues that, “in place of a specific analysis of the claim
limitations, the examiner has provided highly generalized, and often
inaccurate, statements intended to support the conclusion that the claims are
directed to an abstract idea.” Appeal Br. 5. Appellant argues that the
Examiner “also fails to identify the specific claim limitations that are
believed to relate to this interpretation. Generalized statements like those
mentioned above do not permit the applicant to properly understand the
basis of the rejection.” Id. at 6.
Appellant also argues that “[e]ach of independent Claims 1 and 2
provide a narrow improvement in one limited aspect of the mass-
spectrometric identification of a microbe sample (the determination of
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whether or not to employ a mixture analysis using combination spectra).”
Appeal Br. 7. Specifically:
[P]rior art methods often left it unclear as to whether a species
mixture was present that would have benefited from the use of a
mixture analysis using combination spectra. The applicant’s
method, however, does not rely solely on a similarity analysis
but, rather, uses the degree of taxonomical relationship between
microbes of different species in a score list as a means for
determining quickly whether such a mixture analysis would
likely be advantageous. This provides a significant technical
improvement over prior art methods.
Id. at 8. Thus, Appellant argues, the claimed method “provides a more
accurate method of identifying when a sample contains a mix of microbe
species so that a decision may be made as to whether a ‘mixture analysis
using combination spectra’ should be employed.” Id.
Appellant argues that “the McRO court was faced with a situation
analogous to that of the present application.” Id. at 10, citing McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). Appellant
argues that “[t]he McRO court recognized that the claims in question were
not ‘abstract ideas’ since they used limited rules in a process specifically
designed to achieve an improved technological result in conventional
industry practice.” Id. at 12. Appellant argues that “[t]he same analysis
applies equally to the claims of the present invention, which also use limited
rules to achieve an improved technological result in a specific field.” Id.
Appellant also argues that “the examiner has not identified the parts of
the rejected claims that are considered to be ‘extra-solution activities.’ . . .
Moreover, there has been no evidence provided to support the contention
that part or all of the claims represent ‘extra-solution activities.’” Appeal Br.
6–7.
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Principles of Law
A. Section 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court 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’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part 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
risk.”); see also Bilski v. Kappos, 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, 67 (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
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rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 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
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 187; 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 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. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn 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 (internal 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. (alterations in original) (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.
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B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”).2 “All USPTO personnel are, as a matter of internal
agency management, expected to follow the guidance.” Id. at 51; see also
October 2019 Update at 1.
Under the Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3
Revised Guidance, 84 Fed. Reg. at 52–55.

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the Revised Guidance. USPTO,
October 2019 Update: Subject Matter Eligibility (the “October 2019
Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Revised Guidance - Section III(A)(2), 84 Fed. Reg.
54–55.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
Revised Guidance, 84 Fed. Reg. at 52–56.
Revised Guidance Step 2A, Prong 1
Following the Revised Guidance, we first consider whether the claims
recite a judicial exception. The Revised Guidance identifies three groupings
of subject matter included in the abstract idea exception, including “[m]ental
processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion).” 84 Fed. Reg. at 52. “If a claim,
under its broadest reasonable interpretation, covers performance in the mind
but for the recitation of generic computer components, then it is still in the
mental processes category unless the claim cannot practically be performed
in the mind.” Id. at 52, n.14.
Claim 1 recites “comparing [a] sample spectrum to the reference
spectra in [a] library and compiling a similarity score list of the reference
spectra that are most similar to the sample spectrum based on a known
similarity indicator,” “determining, with the aid of the exclusion list, the
taxonomical relationship between two microbes, whose reference spectra are
present in the score list and which belong to different species,” and
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“identifying the microbe sample as a microbe mixture if the determined
taxonomical relationship is below a specified degree.”
Similarly, claim 2 recites “comparing [a] sample spectrum to the
reference spectra and compiling a similarity score list of reference spectra
that are most similar to the sample spectrum based on a known similarity
indicator,” “comparing two reference spectra of the score list whose
microbes belong to different species to determine a degree of similarity
between said two reference spectra,” and “identifying the microbe sample as
a microbe mixture if the similarity of said two compared reference spectra is
below a predetermined similarity threshold.”
Thus, both claim 1 and claim 2 recite comparing spectra, evaluating
similarity, and identifying a sample as a mixture if certain criteria are met.
Claim 1 also recites consulting an exclusion list to determine the
taxonomical relationship between two microbes.
All of these steps consist of observation and evaluation, which can
practically be performed in the human mind. Claims 1 and 2 therefore recite
a mental process, which is an abstract idea and a judicial exception to
patentability.
Revised Guidance Step 2A, Prong 2
Although claims 1 and 2 recite an abstract idea, they would still be
patent-eligible if “the claim as a whole integrates the recited judicial
exception into a practical application of the exception.” Revised Guidance,
84 Fed. Reg. at 54. “A claim that integrates a judicial exception into a
practical application will apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception.” Id. The
analysis of whether a claim integrates a judicial exception into a practical
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application includes “[i]dentifying whether there are any additional elements
recited in the claim beyond the judicial exception(s)” and “evaluating those
additional elements individually and in combination to determine whether
they integrate the exception into a practical application.” Id. at 54–55.
The exemplary considerations indicating that an additional element
may integrate an exception into a practical application include “[a]n
additional element [that] reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field.” Id. at
55. However, “an additional element [that] adds insignificant extra-solution
activity to the judicial exception” is an indication that “a judicial exception
has not been integrated into a practical application.” Id. Such insignificant
extra-solution activity includes “mere data gathering such as a step of
obtaining information about credit card transactions so that the information
can be analyzed in order to detect whether the transactions were fraudulent.”
Id. at 55, n.31.
Here, in addition to the steps that are equivalent to mental processes,
claim 1 recites “providing a library of reference spectra of microbes and an
exclusion list indicative of a degree of taxonomical relationship between the
microbes of the reference spectra” and “acquiring a sample spectrum of the
microbe sample.” Claim 2 similarly recites “providing a library of reference
spectra of microbes” and “acquiring a sample spectrum of the microbe
sample.”
“[P]roviding a library of reference spectra of microbes,” with or
without an exclusion list, and “acquiring a sample spectrum,” however, are
steps required to gather the data for the mental processes of “comparing the
sample spectrum to the reference spectra in the library and compiling a
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similarity score list,” and (for claim 1) “determining, with the aid of the
exclusion list, the taxonomical relationship between two microbes” of
different species with reference spectra present in the score list or (for claim
2) “comparing two reference spectra of the score list whose microbes belong
to different species to determine a degree of similarity between said two
reference spectra,” in order to “identify[] the microbe sample as a microbe
mixture” if the taxonomical relationship is below a specified degree (claim
1) or the similarity of the reference spectra is below a predetermined
threshold (claim 2). The “providing” and “acquiring” data-gathering steps
are therefore merely insignificant extra-solution activity, and are not an
indication that the recited judicial exception has been integrated into a
practical application.
Claims 1 and 2 also recite “when a microbe mixture has been
identified, performing a mixture analysis using combination spectra.” This
contingent limitation, however, also fails to meaningfully limit the recited
abstract idea and therefore does not integrate the judicial exception into a
practical application. The limitation is recited at a high level of generality,
and reads on any method of carrying out “mixture analysis using
combination spectra.” In essence, it amounts to a requirement to apply the
outcome of the mental processes recited in the claims: if thinking about the
data as recited indicates that the sample is a microbe mixture, carry out a
mixture analysis. “Stating an abstract idea while adding the words apply it is
not enough for patent eligibility.” Alice, 573 U.S. at 223 (internal quotation
marks omitted). The final limitation of claims 1 and 2 is therefore
insignificant post-solution activity.
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Considering the claims as a whole confirms that they are directed to a
judicial exception, because the claim limitations amount to directions to
gather certain data, think about it a certain way, and apply (if appropriate)
the outcome of that thought process. We therefore conclude that claims 1
and 2 do not integrate the recited judicial exception into a practical
application.
Revised Guidance Step 2B
The Revised Guidance directs us to consider whether claims 1 and 2
include “additional elements . . . [that] provide[] ‘significantly more’ than
the recited judicial exception.” 84 Fed. Reg. at 56. The Revised Guidance
states that an additional element that “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, . . . is indicative that
an inventive concept may not be present.” Id.
As discussed above, and aside from the elements that are directed to
mental processes, claims 1 and 2 recite providing a library of reference
spectra, acquiring a sample spectrum, and (conditionally) performing
mixture analysis.
These steps, however, are recited at a high level of generality; no
specific process is recited, for example, for acquiring a sample spectrum or
for performing a mixture analysis using combination spectra. Moreover,
Appellant’s Specification states that “mass-spectrometric detection of
specific molecular cell components of microorganisms” has been “known
for some years.” Spec. ¶ 6. “[I]dentification is achieved by means of a
similarity analysis between a mass spectrum of the bacteria to be identified
and reference mass spectra (simply called reference spectra in the following)
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of known bacteria.” Id. ¶ 8. “The reference spectra are generally collated in
one or more collections, for which the term ‘library’ is used in the following.
A library thus comprises one or more collections of reference spectra.” Id.
¶ 9. The Specification thus demonstrates that providing a library of reference
spectra is well-known, routine, and conventional.
The Specification also states that “[t]he identification of bacteria by
mass-spectrometric measurements has been described in [the prior art]. . . .
The identification is achieved by means of a similarity analysis between a
mass spectrum of the bacteria to be identified and reference mass spectra . . .
of known bacteria.” Id. ¶ 8 (emphasis added). The Specification thus shows
that acquiring a sample spectrum, as recited in claims 1 and 2, was also well-
known, routine, and conventional.
In addition, the Specification states that
[i]f a mixture is suspected, methods for the identification of
microbes in mixtures can be used, as described in the
documents DE 10 2009 007 266 A1 (M. Kostrzewa et al.,
corresponding to GB 2 467 636 A or US-2010-0248298-A1).
These documents are included here by reference. The
documents describe a method for the identification of microbe
species in mixtures which is designated below as “mixture
analysis by combination spectra”.
Id. ¶ 25. This description again confirms that mixture analysis using
combination spectra is known in the art and used routinely when a mixture
of microbes in a sample is suspected.
In addition to the above limitations, claim 1 also requires providing an
exclusion list indicative of a degree of taxonomical relationship. The
Specification states that “an experienced specialist determine[s] the
relationships between the microbes of all the reference spectra in the library
once, and add[s] to the library a matrix-like relationship list with the microbe
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species names used for the reference spectra. This list is called an ‘exclusion
list.’” Spec. ¶ 32. “With the aid of this list, the computer program for the
evaluation of the mass spectra can then determine whether such a near
relationship exists, and negate the presence of a mixture when this is the
case.” Id.
That is, a person reviews the microbes in the library and identifies
those microbes that are so closely related that their appearance together in a
score list of reference spectra that are similar to a sample’s spectrum is not
due to both of the reference microbes being present in the sample but only
because those microbes are closely related, and so their reference spectra are
similar to each other. The Specification makes clear, however, that this
process—carried out by a person—is routine and conventional. See Spec.
¶ 21:
[I]t has become established practice to create a tabular score list
with the names of the microbe strains whose reference spectra
resulted in the best similarity scores. . . . This score list should
then be assessed by a specialist, using his/her experience to
make the definitive identification. The specialist must in
particular assess whether the sample is a mixture of different
microbe species when several microbe species are listed in the
score list.
In summary, the combination of elements recited in claims 1 and 2
does not amount to significantly more than the judicial exceptions
themselves, and under 35 U.S.C. § 101 the claimed method is not eligible for
patenting.
Appellant’s Arguments
Appellant argues that the Examiner has not clearly identified the
abstract idea recited in the claims, and the claim limitations that relate to the
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abstract idea. Appeal Br. 5. Appellant argues that “[g]eneralized statements
like those [in the Final Action] do not permit the applicant to properly
understand the basis of the rejection.” Id. at 6. See also Reply Br. 3
(“[T]here was no identification of specific limitations considered to be an
abstract idea, making it impossible for the appellant to formulate an
appropriate response to the rejection.”).
We do not agree with Appellant’s position. The “PTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies 35 U.S.C. § 132, in ‘notify[ing] the applicant . . . [by] stating the
reasons for [its] rejection, or objection or requirement, together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.’ 35 U.S.C. § 132.” In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alterations in original).
Here, the Examiner stated that “the claimed invention only involves
the abstract consideration of data, per se.” Ans. 4. While the Examiner did
not use the phrase “mental processes,” the phrase “consideration of data” is
reasonably interpreted to mean the same thing. In our view, the Examiner
explained the basis of the rejection adequately to allow Appellant to
recognize and respond to the rejection. See Jung, 637 F.3d at 1362 (Section
132 “‘is violated when a rejection is so uninformative that it prevents the
applicant from recognizing and seeking to counter the grounds for rejection.’
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990).”).
Appellant also argues that the claims provide an improvement in the
mass-spectrometric identification of microbes; specifically, in “the
determination of whether or not to employ a mixture analysis using
combination spectra.” Appeal Br. 7. Appellant argues that the claimed
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method “uses the degree of taxonomical relationship between microbes of
different species in a score list as a means for determining quickly whether
. . . a mixture analysis would likely be advantageous.” Id. at 8. Appellant
argues that the claimed method “provides a more accurate method of
identifying when a sample contains a mix of microbe species so that a
decision may be made as to whether a ‘mixture analysis using combination
spectra’ should be employed.” Id.
Appellant also argues that
[d]etermining whether the sample contains a mixture of species
greatly simplifies and accelerates the identification process by
eliminating the need for undertaking unnecessary identification
steps. This step of identifying a microbe mixture thus clearly
improves the technology of microbe identification, and
indicates that any judicial exception is integrated into a
practical application.
Reply Br. 7.
These arguments are unpersuasive. The Specification describes the
conventional method for “[t]he identification of bacteria by mass-
spectrometric measurements,” in which “[t]he identification is achieved by
means of a similarity analysis between a mass spectrum of the bacteria to be
identified and reference mass spectra.” Spec. ¶ 8. “The similarities between
two mass spectra are usually characterized by a ‘similarity indicator.’” Id.
¶ 16.
“[I]t has become established practice to create a tabular score list with
the names of the microbe strains whose reference spectra resulted in the best
similarity scores.” Id. ¶ 21. “This score list should then be assessed by a
specialist, using his/her experience to make the definitive identification. The
specialist must in particular assess whether the sample is a mixture of
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different microbe species when several microbe species are listed in the
score list.” Id.
“Since the mass-spectrometric identification method is nowadays used
in hundreds of routine laboratories, the requirement to have a specialist
assessment is no longer appropriate. . . . The assessment of the score list
therefore has to be largely transferred to a computer program.” Id. ¶ 22.
Thus, the Specification makes clear that the claimed methods amount
to using a computer to carry out the same analysis of the similar spectra in a
score list that is conventionally carried out by a human specialist who
mentally assesses the same data. “An additional element . . . [that] merely
includes instructions to implement an abstract idea on a computer, or merely
uses a computer as a tool to perform an abstract idea,” is not an
improvement to a technical field and is an indication that “a judicial
exception has not been integrated into a practical application.” Revised
Guidance, 84 Fed. Reg. at 55.
Appellant also argues that “the invention is limited to use of a mass
spectrometer, so any judicial exception is clearly implemented with a
particular machine that is integral to the claim.” Reply Br. 7. This argument
is also unpersuasive, because, at most, claims 1 and 2 both require using a
mass spectrometer only to “acquir[e] a sample spectrum of [a] microbe
sample.” Thus, the machine that Appellant points to is used only to gather
data for use in the claimed method, but “[u]se of a machine that contributes
only nominally or insignificantly to the execution of the claimed method
(e.g., in a data gathering step or in a field-of-use limitation) would not
integrate a judicial exception or provide significantly more.” MPEP §
2106.05(b) (citing CyberSource v. Retail Decisions, Inc., 654 F.3d 1366,
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1370 (Fed. Cir. 2011) (“We have held that mere ‘[data-gathering] step[s]
cannot make an otherwise nonstatutory claim statutory.’”) (alterations in
original)).
Appellant also argues that, in McRO, Inc. v. Bandai Namco Games
Amer., Inc., 837 F.3d 1299 (Fed. Cir. 2016), the “court recognized that the
claims in question were not ‘abstract ideas’ since they used limited rules in a
process specifically designed to achieve an improved technological result in
conventional industry practice.” Appeal Br. 12. Appellant argues that “[t]he
same analysis applies equally to the claims of the present invention, which
also use limited rules to achieve an improved technological result in a
specific field.” Id.
This argument is also unpersuasive. The invention in McRO
“improv[ed] the prior art through ‘the use of rules, rather than artists, to set
the morph weights and transitions between phonemes’” in such a way as to
“produce ‘accurate and realistic lip synchronization and facial expressions in
animated characters.’” McRO, 837 F.3d at 1313. “The rules are limiting in
that they define morph weight sets as a function of the timing of phoneme
sub-sequences.” Id.
Appellant’s claims recite no rules with similar specificity to those in
McRO. Rather, claim 1 merely requires “determining, with the aid of the
exclusion list, the taxonomical relationship between two microbes, whose
reference spectra are present in the score list and which belong to different
species,” and “identifying the microbe sample as a microbe mixture if the
determined taxonomical relationship is below a specified degree.” Claim 1
does not recite any “limited rules,” Appeal Br. 12, regarding how the
exclusion list is used to aid in determining the taxonomical relationship
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between species or what degree of taxonomical relationship is critical to
determining that a sample contains a mixture of microbes.
Claim 2 is even less specific, and merely requires “comparing two
reference spectra of the score list whose microbes belong to different species
to determine a degree of similarity between said two reference spectra” and
“identifying the microbe sample as a microbe mixture if the similarity of
said two compared reference spectra is below a predetermined similarity
threshold.” Again, the claim does not recite any rules regarding how the
reference spectra are compared to determine a degree of similarity, nor does
it identify what similarity threshold is critical to determining that a sample
contains a mixture of microbes.
Thus, we do not agree that McRO supports patent-eligibility of the
instant claims. For all of the reasons discussed above, we affirm the rejection
of claims 1 and 2 under 35 U.S.C. § 101. Claims 6–8 and 10–13 fall with
claims 1 and 2 because they were not argued separately. 37 C.F.R.
§ 41.37(c)(1)(iv).
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 6–8,
10–13
101 Eligibility 1, 2, 6–8,
10–13

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED