Ex Parte Friedlander et al

Patent Trial and Appeal Board

Feb 8, 2018

13870324 (P.T.A.B. Feb. 8, 2018)

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.
13/870,324 04/25/2013 Robert R. Friedlander END920120007US4 1058
80878 7590 02/12/2018
Brown & Michaels (END)
c/o Brown & Michaels, PC
118 North Tioga Street
Suite 400
Ithaca, NY 14850
EXAMINER
NEGIN, RUSSELL SCOTT
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
02/12/2018 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@bpmlegal.com
lwood@bpmlegal.com
twood@bpmlegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT R. FRIEDLANDER and JAMES R. KRAEMER1
Appeal 2016-008135
Application 13/870,324
Technology Center 1600
Before RICHARD J. SMITH, RYAN H. FLAX, and
RACHEL H. TOWNSEND 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 method of providing secure access to data representing a
genetic sequence of an organism to at least one user requesting access to the
data. Claims 1-11 are on appeal as rejected under 35 U.S.C. § 101. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as “International Business
Machines Corporation.” Appeal Br. 1.
Appeal 2016-008135
Application 13/870,324
STATEMENT OF THE CASE
The Specification states, “[t]he present invention relates to encryption
of data, and more specifically to the encryption and storage of genetic
surprisal data.” Spec. ^ 2. The Specification further states, “[according to
one embodiment of the present invention, a method of providing secure
access to data representing a genetic sequence of an organism to at least one
user requesting access to the data, the user having a private key and a public
key related to the private key” and “[pjublic key cryptography is a
cryptography system that uses two separate keys to encrypt data, a public
key and a private key. The public key, which can be freely distributed, is
related mathematically to the private key”; the public key can be “a
username and password or identification number, etc., as is commonly
known in the art.” Id. 114, 5, 31. The Specification further states, “[t]he
illustrative embodiments also recognize that with the small amount of
differences present between the genetic sequence from two humans, the
‘common’ or ‘normally expected’ sequences of nucleotides can be
compressed out or removed to arrive at ‘surprisal data’ -differences of
nucleotides which are ‘unlikely’ or ‘surprising’ relative to the common
sequences, for example of a filter.” Id.*\\ 11.
Claims 1 and 8 are the independent claims. Claim 1 is representative
and is reproduced below:
1. A method of providing secure access to data representing a
genetic sequence of an organism to at least one user requesting
access to the data, the user having a private key and a public key
related to the private key, the method comprising the steps of:
a source computer comparing nucleotides of the genetic
sequence of the organism to nucleotides from a reference
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Application 13/870,324
genome, to find differences where nucleotides of the genetic
sequence of the organism which are different from the
nucleotides of the reference genome;
the source computer using the differences to create and
store surprisal data and associated metadata in a repository, the
surprisal data and associated metadata comprising a starting
location of the differences within the reference genome, and the
nucleotides from the genetic sequence of the organism which are
different from the nucleotides of the reference genome,
discarding sequences of nucleotides that are the same in the
genetic sequence of the organism and the reference genome;
the source computer receiving a request from a user for
specific surprisal data and associated metadata;
the source computer retrieving the specific surprisal data
and associated metadata indicated by the user within the
repository;
the source computer using the public key of the user to
encrypt the specific surprisal data and associated metadata to
produce encrypted specific surprisal data and associated
metadata;
the source computer sending the encrypted specific
surprisal data and associated metadata to a repository accessible
to the user, the repository having a location indicator for
accessing the repository over a network; and
the source computer sending the location indicator to the
user.
Appeal Br. 10 (Claims App’x).
The following rejection is appealed:
Claims 1-11 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Action 3.
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Application 13/870,324
DISCUSSION
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. Final Action 3—4; Answer 2-3. Findings of fact
indicated below are provided to highlight evidence of record.
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); see also Ex parte Borden, 93 U.S.P.Q. 2d 1473
(BPAI 2010) (informative) (“Any bases for asserting error, whether factual
or legal, that are not raised in the principal brief are waived.”).
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(emphasis added).
“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.
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).
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Application 13/870,324
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. CIS
Bank Int’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 both
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).
The Federal Circuit has “recognize[d] that defining the precise
abstract idea of patent claims in many cases is far from a ‘straightforward’
exercise.” Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1150
(Fed. Cir. 2016) (quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014)). However, “we continue to ‘treat[ ] analyzing
information by steps people [could] go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category.’” Id. at 1146^17 (quoting Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (citations
omitted); see also Electric Power Group, 830 F.3d at 1353 (“collecting
information, analyzing it, and displaying certain results of the collection and
analysis” “fall[s] into a familiar class of claims ‘directed to’ a patent-
ineligible concept,” that of the abstract idea). The Federal Circuit has
recognized that “a claim for a new abstract idea is still an abstract idea.”
Synopsys, 839 F.3d at 1151.
Further, in In re BRCA1, the Federal Circuit held that a claimed
method for screening a germline of a human subject for an alteration of the
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Application 13/870,324
BRCA1 gene by comparing a sample BRCA1 gene sequence with a
reference, wild-type germline sequence of BRCA1 gene was directed to an
abstract idea — a “mental process of ‘comparing’ and ‘analyzing’ two gene
sequences.” In re BRCA1 and BRCA2-Based Hereditary Cancer Test
Patent Litigation, 774 F.3d 755, 763-64 (Fed. Cir. 2014) (“allowing a patent
on the comparison step could impede a great swath of research relating to
the BRCA genes, and it is antithetical to the patent laws to allow these basic
building blocks of scientific research to be monopolized.”).
Moreover, the Federal Circuit, in Intellectual Ventures ILLCv.
Capital One Financial Corp., 850 F.3d 1332 (Fed. Cir. 2017), where the
claims were held to be directed to a computer programmed to edit XML
documents, “conclude[d] [the claims were] ... at their core, directed to the
abstract idea of collecting, displaying, and manipulating data.” Id. at 1339—
40. Even though the patent at issue in Intellectual Ventures I indicated its
invention provided a concrete solution to a particular problem in computer
programming, it “at best, . . . limit[ed] the invention to a technological
environment for which to apply the underlying abstract concept,” which
does “not render an otherwise abstract concept any less abstract.” Id. at
1340 (citing Affinity Labs of Tex., LLCv. DIRECTV, LLC, 838 F.3d 1253,
1259 (Fed. Cir. 2016)). Under step two of the Alice analysis, the Intellectual
Ventures I Court held that claims reciting generic computer components or
elements and their functions, e.g., organizing, mapping, identifying,
defining, detecting, and modifying, “merely describe the functions of the
abstract idea itself’ and are not sufficient to supply significantly more than
the abstract idea so as to confer patent-eligibility. Id. at 1341.
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The Federal Circuit has established in several other holdings that
collecting, classifying, storing, and organizing data, regardless of whether
such data manipulations are limited to a particular environment, is an
abstract idea and, without more, is not patent eligible. See, e.g., In re TLI
Communications LLC Patent Litigation, 823 F.3d 607 (Fed. Cir. 2016)
(collecting and organizing data in the form of digital images is abstract and
patent ineligible and using computer systems in their generic ways does not
add an inventive concept); Content Extraction and Transmission LLC v.
Wells Fargo Bank, Nat’l Ass ’n, 776 F.3d 1343 (Fed. Cir. 2014) (extracting
data from documents, recognizing information therefrom, and storing the
information is abstract).
Under the above-cited precedent and in view of the facts presented,
we conclude the Examiner’s determination under Alice step one, that the
claims are directed to an abstract idea (using a computer to find differences
between genomes by comparing the sequences and providing that data
regarding the differences upon request via secure access through public key
encryption and private key decryption of the data), is reasonable and discern
no error therein. Simply put, “[information as such is an intangible,” and
collecting it and analyzing it by mathematical algorithm without more are
abstract, and presenting that information with routine tools “is abstract as an
ancillary part of such collection and analysis.” Electric Power Group, 830
F.3d at 1353-54. Further, we also conclude the Examiner’s determination
under Alice step two, that in analyzing the remaining claimed subject matter
individually and as an ordered combination, the claimed data manipulation is
performed by routine computer-aided processing of that data including data
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Application 13/870,324
encryption using mathematical algorithms, is reasonable and without error.
See Answer 3 (referencing “other similar algorithms of genetic data
encryption in the prior art”); see also Gatawood2 Abstract (disclosing
“[s]ystems and methods ... for compressing and comparing data such as
genomic data” via computer systems), id. 6 (disclosing SNP discovery
projects); Markowitz3 Abstract (disclosing “a common interface for multiple
databases containing [genetic data]”), id. 129-30 (teaching security
protection for the genetic information based on user profiles); Von Hoff4
Fig. 6 (disclosing computer networks for storing, identifying, comparing,
and accessing patient biomarker information), id. ^] 36 (teaching the system
contemplates known security measures including identity solutions). The
claims do not require a new source or type of information, or new techniques
or programming for analyzing it or transferring it. Rather, they merely
require selection of information, manipulation of that data for analytical
purposes, using a conventional computer system or network programmed to
do so, including to ready the data for secure transfer, something that is
evidenced to be routine and customary; such steps do not transform the
abstract ideas of the claims into a patent-eligible invention. See, e.g.,
Electric Power Group, 830 F.3d at 1355.
We have considered Appellants’ arguments and find them
unpersuasive. Appellants argue the claims are not directed to an abstract
idea because the Examiner has not classified such under one of the abstract
2 US 2008/0077607 A1 (pub. Mar. 27, 2008) (“Gatawood”).
3 US 2003/0100999 A1 (pub. May 29, 2003) (“Markowitz”).
4 US 2010/0113299 A1 (pub. May 6, 2010) (“Von Hoff’).
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ideas listed in the Examples provided by the USPTO as of the date of the
Appeal Brief. Appeal Br. 6-7. This is not persuasive because, under the
precedent cited above, the claims are directed to a computer based
implementation of determining genetic code differences of organisms
(something that could be done by hand and is merely the act of collecting
information), and providing that data securely upon request, which is
established as abstract.
Appellants argue the claims recite something “significantly more” so
as to provide an inventive concept, e.g., per an analysis under Alice step two.
Id. at 7-8. Appellants point to the “secure access” concept of the claims, as
well as to the method steps recited, e.g., comparing nucleotides, using
differences to create and store suprisal data, metadata, querying a system,
using public and private security keys, etc., as the something more. Id. As
discussed, the steps and concepts identified are merely the manipulation of
data via mathematical algorithms, using well known, routine, conventional
computer/data related means. As the case law makes clear, such steps
cannot supply the something more to confer patent-eligibility to an otherwise
ineligible claim.
For the reasons set forth above, we affirm the rejection.
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SUMMARY
The rejection of the claims as directed to patent-ineligible subject
matter 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
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