Ex Parte Clendenen et al

Patent Trial and Appeal Board

Dec 11, 2017

14128694 (P.T.A.B. Dec. 11, 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.
14/128,694 02/25/2014 Steven R. Clendenen 451185.000018 9016
43548 7590 12/18/2017
FAEGRE BAKER DANIELS LLP
PATENT DOCKETING - INTELLECTUAL PROPERTY
2200 WELLS FARGO CENTER
90 SOUTH SEVENTH STREET
MINNEAPOLIS, MN 55402-3901
EXAMINER
MEHL, PATRICK M
ART UNIT PAPER NUMBER
3777
NOTIFICATION DATE DELIVERY MODE
12/18/2017 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):
PatentDocketing @ F aegreB D .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN R. CLENDENEN, CLIFTON R. HAIDER,
BARRY K. GILBERT, and OLIVER WILLIAM SPEES1
Appeal 2017-010864
Application 14/128,694
Technology Center 3700
Before JEFFREY N. FREDMAN, ULRIKE W. JENKS, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a system and method for detecting vascular contamination
by surgical anesthetic. Claims 1—4, 9-15, 20, and 33—37 are on appeal as
rejected under 35 U.S.C. §§ 101 and 103(a). We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as “Mayo Foundation for
Medical Education and Research.” App. Br. 3.
Appeal 2017-010864
Application 14/128,694
STATEMENT OF THE CASE
The Specification states:
The use of local anesthesia... renders an area insensitive to pain
without affecting consciousness, speeding the detection of
complications and patient recovery. However, when performing
a nerve block, relatively large drug doses can be required to
inhibit the nerve conduction to the surgical site. By way of
example, injection volumes can be in the range of 20-40 cc.
Unfortunately, as little as 1 cc of local anesthesia injected into an
artery can cause seizure, and large intravascular local anesthesia
injection will block the conduction system of the heart, possibly
leading to cardiac arrest and death. . . .
There remains, therefore, a continuing need for improved
systems and methods for providing accurate and early warning
of intravascular local anesthesia.
Spec. 1—2.
Claims 1 and 10 are the independent claims, are representative, and
are reproduced below:
1. A method, comprising:
applying light from one or more sources to tissue of a patient,
wherein the light has multiple wavelengths and includes pulses
of light having an excitation wavelength and a predetermined
excitation pulse sequence;
detecting the light by a light detector after the light has passed
through the tissue of the patient, including detecting light having
an emission wavelength that is different than the excitation
wavelength;
processing the detected light by a processing system, including:
correlating pulse sequences of detected light having the
emission wavelength with the predetermined excitation
pulse sequence to identify the recovery of light having the
emission wavelength, wherein the recovery of light having
2
Appeal 2017-010864
Application 14/128,694
the emission wavelength is representative of the presence
of fluorescing dye-marked anesthetic in the patient’s
bloodstream; and
processing the detected light to determine the blood
oxygen saturation level of the patient; and
displaying concurrently the patient’s blood oxygen saturation
level, and information representative of the presence of dye-
marked anesthetic in the patient’s bloodstream based on the
recovery of the light having the emission wavelength.
10. An instrument for use in connection with a patient receiving
fluorescing dye-marked anesthetic, comprising:
a probe configured to be positioned on the patient, including:
a source of light having multiple wavelengths, including
pulses of light having an excitation wavelength and a
predetermined excitation pulse sequence; and
a detector for detecting light, including light having an
emission wavelength that is different than the excitation
wavelength;
a processing system coupled to the probe, wherein the processing
system concurrently:
correlates detected pulse sequences of light having the
emission wavelength with the predetermined excitation
pulse sequence to identify the recovery of light having the
emission wavelength, wherein the recovery of light having
the emission wavelength is representative of the presence
of the fluorescing dye-marked anesthetic in the patient’s
bloodstream; and
processing the detected light to determine the blood
oxygen saturation level of the patient; and
a display coupled to the processing system to display the patient
oxygenation information and information representative of the
3
Appeal 2017-010864
Application 14/128,694
presence of the dye-marked anesthetic in the patient’s
bloodstream.
App. Br. 18, 19 (Claims App’x.).
The following rejections are on appeal:
Claims 1—4, 9—15, 20, and 34—37 stand rejected under 35U.S.C. § 101
as being patent-ineligible. Final Action 3.
Claims 1—4, 9—15, 20, and 33-37 stand rejected under 35 U.S.C.
§ 103(a) over Corlu,2 Chen,3 and Nagpal.4 Id. at 9.
FINDINGS OF FACT
Except as otherwise indicated herein, we adopt the Examiner’s
findings of fact, reasoning on scope and content of the claims and prior art,
and conclusions set out in the Final Action and Answer. We identify the
following facts to highlight certain evidence.
FF1. Corlu is directed to and discloses using “the fluorophore
Indocyanine Green (ICG)[,j . . . injected intravenously” to obtain
“images of human breast cancer based on fluorescence,” which
teaches, generally, the “applying light,” “detecting light,” “processing
light”, “and displaying light” claim elements, insofar as they relate to
2 Corlu et al., Three-dimensional in vivo Fluorescence Diffuse Optical
Tomography of Breast Cancer in Humans, 15 Optics Express 6696—716
(2007) (“Corlu”).
3 US 5,402,779 (issued Apr. 4, 1995) (“Chen”).
4 Dr. Manish Nagpal, Combined Fluorescein, Indocyanine Angiography and
Optical Coherent Tomography Using Spectralis, Rajasthan J.
Opthamology (8 pages, numbered as printed from online source) (2011),
http://www.rostimes.eom/2011RJO/-RJ020110101.htm, visited May 17,
2016 (“Nagpal”).
4
Appeal 2017-010864
Application 14/128,694
exciting a molecule with light, detecting the light then emitted by that
molecule, correlating that detected emitted light as representative of
the presence of the fluorescing molecule, and displaying that
information. Corlu 6696 (Abstr.); see also Final Action 9—16 and
Answer 12—18 (discussing Corlu).
FF2. Corlu discloses “deliver[ing] light from four sinusoidally
intensity modulated (70 MHz) laser diodes operating at 650, 690, 786
and 830 nm,” where “[a] diode laser at 786 nm is utilized for
excitation of ICG and fluorescence,” which results in ICG having a
CCD-camera-measured “excitation wavelength [of] 786 nm,”
whereby “ICG pharmacokinetics” is derived, which teaches the claim
elements relating to “multiple wavelengths” of applied light, “an
excitation wavelength,” “detecting light by a light detector after the
light has passed through the tissue,” the “emission wavelength that is
different than the excitation wavelength,” and “correlating . . .
detected light having the emission wavelength ... [so as to be]
representative of the presence of the fluorescing dye ... in the
patient’s bloodstream.” Corlu 6700-05; see also Final Action 9-16
and Answer 12—18 (discussing Corlu).
FF3. Corlu discloses also collecting blood oxygen saturation
(St02) data, along with ICG fluorescence data, and displaying each
together, simultaneously, which teaches the “processing the detected
light to determine the blood oxygen level” and “displaying
concurrently” claim elements. Corlu 6703—14 (see Figs. 11, 14, 16);
see also Final Action 9-16 and Answer 12—18 (discussing Corlu).
5
Appeal 2017-010864
Application 14/128,694
FF4. Chen discloses:
A method and apparatus in which an anesthesia catheter is
inserted into the epidural space of the patient. A blood soluble
dye mixed with a local anesthetic is injected through the catheter
and into the patient. A transducer clip is positioned on the finger
of the patient for monitoring the light responsive characteristics
of the patient's blood. A transducer signal is fed to a
microprocessor for generating a real time display for indicating
to the anesthesiologist that the dye, and therefore the local
anesthetic, is present in the bloodstream.
Chen Abstr.; see also Final Action 9, 11—14, 16—17 and Answer 12,
14—16, 18 (discussing Chen).
FF5. Further to the preceding finding of fact, Chen discloses
that the dye can be ICG dye, which “has been used since the 1940’s
and has been shown to be safe when injected intravascularly. Its
presence within the blood stream is detected at a distant site by the use
of spectrophotometric equipment.” Chen 4:41—65.; see also Final
Action 9, 11—14, 16—17 and Answer 12, 14—16, 18 (discussing Chen).
Chen teaches ICG dye is useful in combination with and for non-
invasively detecting anesthetic in a patient’s bloodstream, which
reasonably identifies another use for the system and method of Corlu,
which uses the same dye and roughly similar techniques. According
to the Examiner, it would have been reasonable for the skilled artisan
to expect to successfully use the system and method of Corlu in place
of that of Chen for the purpose of Chen, that is, to detect anesthetic
associated with ICG in the bloodstream. See Final Action 11.
FF6. Chen discloses measuring light absorbance by ICG and
the respective change in emitted light, rather than utilizing the known
6
Appeal 2017-010864
Application 14/128,694
fluorescing property of ICG in detecting the dye in a patient’s
bloodstream. Chen 4:66—5:20.
FF7. Nagpal is directed to and discloses combined fluorescein
angiography (FA), indocyanine green (ICG) angiography, and optical
coherent tomography (OCT), most specifically for non-invasively
imaging the vasculature of the retina, and discloses that the light
absorption and light emission properties of ICG were well known.
Nagpal 1; see also Final Action 9, 12—16 and Answer 12, 15—18
(discussing Nagpal).
FF8. Nagpal discloses:
simultaneous [ly measuring] FA and ICG-A, [where] the laser
radiation is deflected by means of a resonant scanner so that the
two are done quasi-simultaneously. The infrared laser is guided
onto each line scan, and the blue radiation is applied during the
return movement of the scanning mirror. Images are digitized
upto the rate of 20 frames per second with the time separation
between corresponding lines of two angiograms being in the
order of 0.1ms.
Nagpal 2 (also specifically disclosing “time sequence correlation” and
“scan[ning] images at 40 kHz”); see also Final Action 9, 12—16 and
Answer 12, 15—18 (discussing Nagpal). This teaches that excitation
illumination can be applied at “a predetermined excitation pulse
sequence” and that the related detected emitted light can then be
correlated as representative of the presence of fluorescing dye in the
bloodstream. See Answer 15—16.
7
Appeal 2017-010864
Application 14/128,694
DISCUSSION
Only those arguments made by Appellants in the Appeal Brief and
properly presented in the Reply Brief have been considered in this Decision.
Arguments not so presented in the Briefs are waived. See 37 C.F.R.
§ 41.37(c)(l)(iv) (2015).
Obviousness
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). “[T]he analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id. at
418. It is obvious to those skilled in the art to substitute one known
equivalent for another, be those equivalents method steps or apparatus
components. See In re Omeprazole Patent Litigation, 483 F.3d 1364, 1374
(Fed. Cir. 2007)
To the extent Appellants argue over the prior art references
individually, such arguments are not persuasive. “Non-obviousness cannot
be established by attacking references individually where the rejection is
based upon the teachings of a combination of references. . . . [The
reference] must be read, not in isolation, but for what it fairly teaches in
combination with the prior art as a whole.” In re Merck & Co., 800 F.2d
1091, 1097 (Fed. Cir. 1986).
8
Appeal 2017-010864
Application 14/128,694
Under the above-cited precedent in view of the facts highlighted
above, we conclude the Examiner has established that the claims would have
been obvious over the combination of Corlu, Chen, and Nagpal. See Final
Action 9—17. As determined by the Examiner, Chen teaches and suggests
that ICG dye is useful, safe, and compatible with anesthetic for non-
invasively detecting associated anesthetic in a patient’s bloodstream using
light. FF4—FF5. Further, while Chen uses the light-absorbing property of
ICG to detect associated anesthetic (FF6), Corlu discloses that ICG’s known
fluorescence can be detected in the bloodstream as well (and imaged), and
also teaches the remainder of the method and apparatus defined by
independent claims 1 and 10. FF1—FF3. Moreover, while Corlu and Chen
do not specify using “a predetermined excitation pulse sequence” and the
related elements that necessarily flow therefrom, as claimed, Nagpal teaches
that, when using ICG fluorescence to image vasculature, a predetermined
excitation pulse sequence and related correlation to the light for imaging and
displaying is useful, particularly when imaging with multiple fluorescing
markers. FF7—FF8.
While Appellants separately group the claims in their Appeal Brief in
arguing patentability over the Corlu-Chen-Nagpal combination, the
arguments presented are substantially similar and we address them together,
except where otherwise necessary.
In arguing the patentability of claim 1 (and its dependent claims 2-4,
9, 36, and 37) and claim 10 (and its dependent claims 13—15, 20, and 33—
35), Appellants argue Corlu “has absolutely nothing to do with anesthetic
monitoring” and “therefore does not teach the concurrent display of
9
Appeal 2017-010864
Application 14/128,694
information relating to the presence of anesthetic in the bloodstream and
blood oxygen saturation.” App. Br. 12, 14. While Appellants are correct
that Corlu is not directed to monitoring anesthetic, Chen is, and both
references utilize the same fluorescing molecule, ICG, to detect its presence
in the bloodstream. Because we conclude, for at least this commonality, that
it would have been reasonable for the skilled artisan to have combined these
references, Appellants’ argument over Corlu is not persuasive.
Appellants argue Chen, while teaching using ICG dye as a marker for
local anesthetic, “does not teach the use of the fluorescing properties of the
ICG dye, as recited in the claims.” App. Br. 12, 14. Again, while
Appellants are correct that Chen is not directed to using the (well known)
fluorescing property of ICG to detect its presence in a patient’s bloodstream,
Corlu does teach doing so and we have concluded that Corlu and Chen are
reasonably combined. Therefore, Appellants’ argument over Chen
individually is not persuasive.
Further, Appellants argue,
Since the imaging procedure described by the Corlu article does
not involve anesthetic, there would have been no reason [to]
incorporate the anesthetic monitoring technology of the Chen
patent into the imaging procedure of the Corlu article.
Perhaps even more significantly, the very different natures of the
technologies of the Corlu and Chen references render them
incompatible for combination.
App. Br. 12, 15. Appellants urge that Corlu is directed to intentionally
injecting dye for detection at a tumor while Chen is directed to monitoring
the inadvertent entry of the anesthetic and dye into a patient’s bloodstream,
which, Appellants contend, conflict with one another. Id. at 12—13, 15. We
10
Appeal 2017-010864
Application 14/128,694
conclude that it would have been reasonable to use the system components
and methodology steps of Corlu for the similar or equivalent system
components and methodology steps of Chen to achieve the objective of
Chen, which is detecting the presence of ICG and associated anesthetic in a
patient’s bloodstream. FF1—FF5. Therefore, Appellants’ arguments are not
persuasive.
Appellants also argue:
the Nagpal article does not disclose the claimed use of pulsed
light excitation and the correlation of a detected light sequence
with the pulse sequence to identity the presence of dye-marked
anesthetic. Instead, the Nagpal article describes the combined
injection of both fluorescein and ICG dyes in connection with a
simultaneous angiography technique during which fluorescein
angiography (FA) images and ICG-An images are acquired
simultaneously. The article describes the “time sequence
correlation” pointed to in the Office Action as meaning “[bjoth
the dyes are injected and, therefore, imaged simultaneously.
Therefore the physiological difference in their distribution and
circulation through the eye are easily discernible.” The described
correlation therefore relates to the relative timing of the two
imaging techniques. This disclosure is wholly unrelated to the
correlation of predetermined excitation pulse sequences with the
pulse sequences of detected light.
App. Br. 13, 15 (internal footnotes omitted). The claims do not define any
specific “predetermined excitation pulse sequence,” thus, any predetermined
sequence of excitation illumination that is correlated with detected emission
light (e.g., ICG fluorescing) so as to be representative of the fluorescing
dye’s and associated anesthetic’s presence in a patient’s bloodstream falls
within the scope of this claim element. Nagpal teaches such a predetermined
excitation pulse sequence, as claimed, and it would have been obvious to use
11
Appeal 2017-010864
Application 14/128,694
such when collecting data based on a spectrum of excitation light, resultant
marker fluorescence, and simultaneous blood O2 saturation data, as taught
byCorlu. FF1-FF3, FF7-FF8. See In re Self, 671 F.2d 1344, 1348 (CCPA
1982) (“[Ajppellanf s arguments fail from the outset because . . . they are
not based on limitations appearing in the claims.”) For these reasons,
Appellants’ argument is not persuasive.
Appellants separately argue the non-obviousness of each of claim 11
and claim 12 over the cited prior art combination. App. Br. 16. However,
the arguments presented essentially restate those presented for the
patentability of claim 1, that
the subject matter of the Corlu article has absolutely nothing to
do with anesthetic monitoring. Unlike the claimed invention, the
Corlu article does not teach or suggest either (1) processing
detected light to identify the presence of dye-marked anesthetic
in a patient's bloodstream, or (2) the display of information
representative of the presence of dye-marked anesthetic in the
patient's bloodstream. It therefore does not teach the
simultaneous display of information relating to the presence of
anesthetic in the bloodstream and blood oxygen saturation.
Id. at 16—17. Therefore, for the reasons set forth above, we also are
unpersuaded by this argument.
For the reasons above, we affirm the obviousness rejection.
Patent Eligibility
“Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.” Mayo Collaborative Servs. v.
Prometheus Labs, Inc., 566 U.S. 66, 71 (2012) (quoting Gottschalkv.
12
Appeal 2017-010864
Application 14/128,694
Benson, 409 U.S. 63, 67 (1972)). Claims directed to nothing more than
abstract ideas (such as mathematical algorithms), natural phenomena, and
laws of nature are not eligible for patent protection. Diamond v. Diehr, 450
U.S. 175, 185 (1981); accord MPEP § 2106 (II) (discussing Diehr).
In analyzing patent-eligibility questions under 35 U.S.C. § 101, the
Supreme Court instructs us to “first determine whether the claims at issue
are directed to a patent-ineligible concept.” Alice Corp. Pty Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2355 (2014). If the initial threshold is met, we
then move to a second step and “consider the elements of each claim
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 566 U.S. at 97).
Under the above-cited precedent, we conclude the claimed invention
is not patent-ineligible.
The Examiner determined that claim 1 is directed to the abstract
idea(s) of:
“correlating pulse sequences of detected light having the
emission wavelength with the predetermined excitation pulse
sequence to identify the recovery of light having the emission
wavelength”, “the recovery of light having the emission
wavelength is representative of the presence of fluorescing dye-
marked anesthetic in the patient’s bloodstream”, “processing the
detected light to determine the blood oxygen saturation level of
the patient”.
Final Action 3. The Examiner determined that claim 10 is directed to the
abstract idea(s) of:
“correlates detected pulse sequences of light having the emission
wavelength with the predetermined excitation pulse sequence to
13
Appeal 2017-010864
Application 14/128,694
identify the recovery of light having the emission wavelength,
wherein the recovery of light having the emission wavelength is
representative of the presence of the fluorescing dye-marked
anesthetic in the patient’s bloodstream” and “processing the
detected light to determine the blood oxygen saturation level of
the patient”. Notably, these steps are not required to be
performed by a computer processor, per se, and thus also read on
mental activity.
Id. at 3^4. The Examiner further explained, “[t]he reasons that the
limitations are considered an abstract idea are: although not drawn to the
same subject matter, these claimed limitations are similar to mathematical
concepts or operations for manipulating and/or relating data, organizing
information through correlations; calculating parameters; and/or collecting
and comparing known data, i.e. ‘an idea of itself.” Id. at 4.
Having determined that the claims are directed to an abstract idea,
which is patent-ineligible, turning to the second required analysis step under
Alice, the Examiner determined that the receiving and displaying steps of
claim 1 and the light source, sensor, and display elements of claim 10 were
merely routine and conventional and, thus, not additional claim elements
that amounted to significantly more than the abstract idea(s) so as to make
the claims patent eligible. Id. 4—5.
Appellants argue claims 1 and 10, and their respective depending
claims, separately. However, the arguments are essentially the same and we
address them together.
Appellants argue the claimed invention is not directed to an abstract
idea, but is directed to “a method for applying, detecting and processing
light in a particular manner, and then displaying concurrently the patient’s
blood oxygen saturation level and information representative of the presence
14
Appeal 2017-010864
Application 14/128,694
of dye-marked anesthetic.” App. Br. 6—7, 9. Appellants also argue that the
“very specific approach claimed,” i.e., “correlating the pulse sequences of
the detected light with the predetermined excitation pulse sequence to
identify the recovery of light representative of the dye-marked anesthetic,” is
an improvement in the technology because it “improve[es] morbidity.” Id.
at 7, 9. Appellants further argue that “[t]he Office Action does not identify
any particular abstract idea recited by the claims,” but merely concludes the
claims are directed to such and points to limitations recited by the claims as
describing the same. Id. at 7, 10.
Appellants argue that, if the claims were found to be directed to an
abstract idea, they recite substantial additional elements that provide patent
eligibility, including:
the steps of (1) applying pulses of light having a predetermined
excitation pulse sequence, and (2) correlating the pulse
sequences of the detected light (i.e., not the mere presence of the
detected light itself) with the predetermined excitation pulse
sequence. It is this correlation that is used to (3) identify the
recovery of light that is representative of the presence of dye-
marked anesthetic in the patient's bloodstream.
Id. at 8, 10.
While the Examiner has followed the correct steps of analysis
required by the Supreme Court’s holding in Alice, we do not agree with the
conclusion.
The claims are not directed to merely manipulating data nor are they
directed to mere mathematical calculations. The claims are also not directed
to the natural phenomena of a correlation between a detectable amount of
fluorescing dye and a count of dye molecules. The claims are also not
15
Appeal 2017-010864
Application 14/128,694
directed to the concept that a molecule can be made to fluoresce when
excited by light; they are not directed to the concept that a fluorescent
molecule can be attached to or provided with an anesthesia molecule. These
would arguably be natural phenomena. The claims are directed to taking
advantage of these concepts to (1) make anesthesia detectable and (2)
noninvasively detect anesthesia in a patient’s blood; which, as explained in
the Specification, can prevent seizure and cardiac arrest in the patient. See
Diamond v. Diehr, 101 S.Ct. 1048 (1981) (the invention relied on a
mathematical formula, the Arrhenius equation, as a part of a greater
manufacturing process, but did not claim the equation itself, but rather,
claimed an improved rubber curing process); Rapid Litigation Management
LTD v. CellzDirect, Inc., 827 F.3d 1042 (Fed. Cir. 2016) (the claimed
process of producing a preparation of hepatocytes, as a whole, was not
directed to a natural law itself and was not routine or conventional, it
advantageously applied a natural discovery in a way that achieved a new and
useful end).
While the claims here may rely on natural phenomena and abstract
mathematical correlations, as did those in Diehr and CellzDirect, “[a]t some
level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas.’” Alice, 134 S.Ct. at 2354
(quoting Mayo, 132 S.Ct. at 1293) (emphasis added); see also Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 842 F.3d 1288, 1299 (Fed. Cir. 2016)
(indicated the same in finding claims patent-eligible). The claims are not
directed to, and would not preempt, measuring fluorescence or using math to
correlate a fluorescence measurement to the presence of or an amount of a
16
Appeal 2017-010864
Application 14/128,694
fluorescing molecule. No more than this would likely be an abstract idea,
but the claims go further and apply such features to a larger process or
system, which cannot be ignored when considering the claims in their
entirety.
Having concluded that the claims are not directed to an abstract idea
(or natural phenomena), we need not proceed to Alice’s step two. See Thales
Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017) (the claims
relied on, but were “not merely directed to the abstract idea”).
We reverse the patent-ineligibility rejection.
SUMMARY
The rejection of the claims as directed to patent-ineligible subject
matter is reversed.
The rejection of the claims as obvious over the cited prior art
combination is affirmed.
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
17