Christian A. Le Cocq et al.

Patent Trials and Appeals Board

Jan 27, 2020

14533743 - (R) (P.T.A.B. Jan. 27, 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.
14/533,743 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.
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Application 14/533,743

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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
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Application 14/533,743

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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

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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).
REHEARING DENIED