Christian A. Le Cocq et al.Download PDFPatent Trials and Appeals BoardJan 27, 202014533743 - (R) (P.T.A.B. Jan. 27, 2020) Copy Citation 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. 14/533,743 11/05/2014 Christian A. Le Cocq 20140281-01 3213 22878 7590 01/27/2020 Agilent Technologies, Inc. Global IP Operations 5301 Stevens Creek Blvd Santa Clara, CA 95051 EXAMINER WOITACH, JOSEPH T ART UNIT PAPER NUMBER 1631 NOTIFICATION DATE DELIVERY MODE 01/27/2020 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): Agilentdocketing@cpaglobal.com ipopsadmin@agilent.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTIAN A. LE COCQ, MAGNUS ISAKSSON, ASHUTOSH, and LINUS FORSMARK Appeal 2019-004221 Application 14/533,743 Technology Center 1600 Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and JOHN E. SCHNEIDER, Administrative Patent Judges. GRIMES, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests rehearing, with respect to claim 8, of the decision entered October 25, 2019 (“Decision”). The request for rehearing is denied. Appellant argues that “[t]he Decision fails to recognize that claim 8 is eligible subject matter because it recites a data structure used in a method that results in an improvement in computer technology.” Req. Reh’g 2. Appellant argues that “the Board overlooked and misapprehended the relevant holdings of Enfish[, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)] and the significance of the claimed improvement.” Id. Appeal 2019-004221 Application 14/533,743 2 Appellant argues: The Decision attempts to distinguish claim 8 from Enfish on the ground that Enfish’s claims “were directed to improvements in the way computers and networks carry out their basic functioning . . . ,” quoting from SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). But this overlooks that the claimed methods employ additional information available from the design of the target enrichment panel used to produce the sequence reads thereby improving computer function. (See specification, page 25, lines 17 to 21). “[T]he computing time of the genomic location tagging may be reduced by about a factor of 10, and tagging to locations that are incompatible with the experimental design, which may otherwise occur to 2-3% of the sequence reads, is avoided.” (Id.) Id. at 2–3. Appellant also argues that the Decision misinterprets Enfish and McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), and argues that these cases were not correctly applied to the facts of the present appeal. Id. at 3–6. The Decision, however, acknowledged and addressed Appellant’s argument with respect to claim 8 and the reliance of that argument on Enfish. See Decision 14–16. While Appellant disagrees with our interpretation of Enfish and McRO, and our decision as to claim 8 on appeal, a request for rehearing must do more than dispute issues that have already been decided. A “request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a)(1). As to Appellant’s argument that the method of claim 8 improves computer function because it reduces the computing time for genomic Appeal 2019-004221 Application 14/533,743 3 tagging by a factor of ten, that argument was not made in the Appeal Brief or Reply Brief. Appellant argued only that the generic data structure required by claim 8 is akin to the self-referential table of Enfish, not that the generic data structure decreases the computing time required for genomic tagging. See Reply Br. 7–8. New arguments are not permitted in a request for rehearing. 37 C.F.R. § 41.52(a)(1).1 In summary, because Appellant has pointed to no issue of fact or law that we overlooked or misunderstood in the Decision, the Request for Rehearing is denied. DECISION SUMMARY Outcome of Decision on Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Denied Granted 1–20 101 Eligibility 1–20 Final Outcome of Appeal after Rehearing: Claims 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 101 Eligibility 1–20 1 The exceptions noted in 37 C.F.R. § 41.52(a)(1) are not applicable here. Appeal 2019-004221 Application 14/533,743 4 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). REHEARING DENIED Copy with citationCopy as parenthetical citation