Ex Parte Gopalan

Patent Trials and Appeals Board

Jan 31, 2019

13926096 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/926,096 06/25/2013 Suresh Gopalan
26486 7590 02/04/2019
BURNS & LEVINSON, LLP
125 SUMMER STREET
BOSTON, MA 02110
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
31851-101 CONCIP 7696
EXAMINER
PARK,HYUND
ART UNIT PAPER NUMBER
2865
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
docketing@burnslev.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SURESH GOP ALAN
Appeal2018-003363
Application 13/926,096
Technology Center 2800
Before JAMES C. HOUSEL, DONNA M. PRAISS, and
MONTE T. SQUIRE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-17 under both 35 U.S.C. § 112, first paragraph,
as failing to comply with the written description requirement, and § 101, as
directed to patent-ineligible subject matter. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision refers to the Specification ("Spec.") filed June 25, 2013, the
Examiner's Final Office Action ("Final") dated December 1, 2016,
Appellants' Appeal Brief ("Appeal Br.") filed April 28, 2017, the
Examiner's Answer ("Ans.") dated December 14, 2017, and Appellants'
Reply Brief ("Reply Br.") filed February 12, 2018.
2 Appellant is the Applicant, ReSurfX, Inc., which is identified in the Appeal
Brief as the real party in interest (Appeal Br. 3).
Appeal2018-003363
Application 13/926,096
STATEMENT OF THE CASE
The invention relates to methods and systems for high-confidence
utilization of large-scale datasets (Spec. ,r 2). As an example of such large-
scale datasets, Appellant describes known large-scale measurements of
organismal/cellular state which involve multiple independent measurements
of each parameter, e.g., genes, transcripts, proteins, etc. (id. ,r 4). Appellant
further describes analyzing such datasets using statistical or mathematical
principles, e.g., for detecting differentials between datasets exploring
different conditions, to increase the confidence of downstream steps (id.
,r 5). According to Appellant, there is a need for an understanding of system
specific properties and the behavior of different parameters used in such
analyses with respect to each other (id.). Appellant also discloses that
understanding properties of such datasets would help design better
measurement technologies (id.).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
1. A computer implemented method for-devising spectrally based
measurements, wherein a signal is measured at different point
along a spectrum, the method comprising the steps of:
selecting a number of measurements along the spectrum,
constituting at least one data set;
selecting a metric for determining substantially optimal
combination of true positives and false positives in said at least
one data set;
applying an optimization technique; and
obtaining, from the results of the optimization technique,
a value for at least one optimization parameter, said value for at
least one optimization parameter resulting in substantially
optimal combination of true positives and false positives;
wherein the obtaining at least one optimization parameter
comprises obtaining a value of a number of independent
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Application 13/926,096
measures; wherein obtaining a value of a number of
independent measures comprises obtaining at least one
combination of a value of a number of independent measures
and a value for a confidence measure; said independent
measures comprising measures of a parameter of spectral
property being measured obtained using different measurement
criteria;
implementing a measurement strategy by placement of
sensors or design of components that allow design of
measurement by sensors to implement the number of
independent measures; wherein the measurement strategy for
the spectrally based measurements results from the number of
independent measures;
wherein a number of true positives and false positives are
a function of at least one combination of the number of
independent measures and the confidence measure; and
wherein the steps of selecting a metric, applying an
optimization technique, and obtaining, from the results of the
optimization technique, a value are performed by means of a
non-transitory computer usable medium having computer
readable code that causes a processor to perform the steps;
whereby such measurement are used in systems used in
applications including nucleic acid sequencing, high spatial
density measurement of spectrally based measurement,
including fluorescence, based signals using scanners and
cameras including for nucleic acid and protein measurements.
Independent claim 12 recites a system comprising at least one
processor and computer usable media having computer readable code for
causing the processor to perform a method similar to that of claim 1.
Independent claim 16 recites a computer program product comprising
a non-transitory computer usable medium having computer readable code
for causing a computer system to perform a method similar to that of claim
1.
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ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("[I]t has long been the Board's practice to require an applicant to identify
the alleged error in the examiner's rejections.")). After considering the
argued claims relative to case law presented in this Appeal and each of
Appellant's arguments, we are persuaded that Appellant identifies reversible
error in Rejection 1 only. Thus, we reverse Rejection 1 for the reasons given
by Appellant in the Appeal and Reply Briefs, but otherwise affirm Rejection
2 for the reasons expressed in the Final Office Action and the Answer. We
add the following primarily for emphasis.
Rejection 1
The Examiner rejects claims 1-17 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The Examiner finds that the claims contain subject matter which was not
described in the Specification in such a way as to reasonably convey to one
skilled in the relevant art that the Inventor, at the time the application was
filed, had possession of the claimed invention (Final 2). Specifically, the
Examiner finds that the recitation, "implementing a measurement strategy by
placement of sensors or design of components that allow design of
measurement by sensors to implement the number of independent measures,
wherein the measurement strategy for the spectrally based measurements
results from the number of independent measures," in claims 1, 12, and 16
are not supported in the original disclosure (id.). The Examiner finds that,
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although paragraph 33 describes a sensor design strategy, the Specification
fails to disclose "actually implementing the designed sensor strategy by
actually placing the sensors" (id. at 2-3). The Examiner also finds that the
entire original disclosure is directed to strategizing using a generic computer
(id. at 3).
Appellant argues that one skilled in the art, upon reading the
Specification and drawings, would recognize that the Applicant had
possession of the claimed invention (Appeal Br. 9). Appellant begins by
asserting a definition of the level of ordinary skill in the art (id.; see also
Reply Br. 4--5). In this regard, Appellant notes the Inventor's technical
expertise, including an advanced degree, knowledge and experience to
understand the physical nature of measurements and the analytical methods
to solve difficulties in direct utilization of measurements due to stray signals
or data complexity (Appeal Br. 10, citing the 37 C.F.R. § 1.132 Declaration
of Suresh Gopalan ("Gopalan Declaration") filed August 19, 2016).
Appellant asserts that prior art solutions to these problems include the use of
model based approaches to summarize the data (id., citing US 6,571,005,
issued May 27, 2003). Appellant also notes that the art includes nucleic acid
sequencing, high spatial density measurement of spectrally based
measurement, and computational biology (id.). Based on this information,
Appellant contends that the educational level of active workers in the art is
at the graduate level (id.).
Appellant next contends that one skilled in the art would be familiar
with the design of equipment such as monochromators and interferometers
(Appeal Br. 10, citing https://saylor.org/site/wp-content/uploads/2012/07 I
ChapterlOl 1.pdf ("Saylor") and D. Sheehan, Physical Biochemistry,
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Chapter 3, p. 56 ("Sheehan")). 3, 4 Appellant notes the Specification,
paragraph 33 states that one approach to implementing measurement
strategies is the placement of sensors or design alternatives (id. at 11 ).
Appellant also notes the Specification, paragraph 32 provides an example of
a measurement strategy (id., also citing Fig. 20). Appellant asserts that,
from these disclosures and "from the knowledge that in some spectroscopic
techniques different frequencies are imaged at different locations or different
frequencies require different program code," one skilled in the art "would
know that a measurement strategy can be implemented by placement of
sensors or alteration of design of components to implement the number of
independent measures" (id.).
In response, the Examiner finds that the "original disclosure simply
does not disclose 'implementing a measurement strategy by placement of
3 Appellant additionally contends that one skilled in the art would be
familiar with the engineering design process (Reply Br. 5, citing Ertas, A.,
Jones, J.C., The Engineering Design Process, John Wiley and Sons, New
York, 1996, and https://www.saylor.org/site/wp-content/uploads/2012/09/
ME 101-4 .1-Engineering-Design-Process. pdf, and
https://www.nasa.gov/audience/foreducators/best/edp.html) (Reply Br. 5).
While we have little doubt that the person of ordinary skill in this art would
be familiar with the engineering design process, we will not consider these
additional references because they were not presented in the principal Brief.
See 37 C.F.R. § 4I.41(b)(l).
4 Moreover, in the Reply Brief, Appellant presents a new argument not
raised in the Appeal Brief discussing in detail that the skilled artisan would
be familiar with two ways of making measurements at the desired
frequencies based on the Saylor and Sheehan references, including that the
skilled artisan would be familiar with prisms and gratings as dispersing
elements (Reply Br. 6). We will not consider this new argument because
Appellant fails to provide a showing of good cause explaining why the
argument could not have been presented in the principal Brief. See
37 C.F.R. § 41.41(b)(2).
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sensors or design of components that allow design of measurement by
sensors to implement the number of independent measures'" (Ans. 3). In the
Examiner's view, "the original disclosure fails to disclose actually placing
the sensors using the measurement strategy" (id.). The Examiner notes that
Appellant admits that the "claimed invention is directed to designing
measurement strategies that can significantly eliminate stray signals" (id. at
3--4 (italics omitted)). The Examiner concludes that "[c]ontemplating and
designing ways to place sensors for particular measurement[ s] is not the
same as actually placing the sensors to obtain the actual measurements" (id.
at 4).
"[The written description] inquiry is a factual one and must be
assessed on a case-by-case basis." Purdue Pharma L.P. v. Faulding, Inc.,
230 F.3d 1320, 1323 (Fed. Cir. 2000). In rejecting a claim under the first
paragraph of 35 U.S.C. § 112 for lack of adequate descriptive support, it is
incumbent upon the Examiner to establish that the originally-filed disclosure
would not have reasonably conveyed to one having ordinary skill in the art
that Appellant had possession of the now claimed subject matter. Ari ad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane). Adequate description under the first paragraph of 35 U.S.C. § 112
does not require literal support for the claimed invention. In re Herschler,
591 F.2d 693, 701 (CCPA 1979); In re Edwards, 568 F.2d 1349, 1351-52
(CCPA 1978); In re Wertheim, 541 F.2d 257, 262 (CCPA 1976). In
addition, the written description requirement does not demand either
examples or an actual reduction to practice. Ariad Pharms., 598 F.3d at
1352. Rather, it is sufficient if the originally-filed disclosure would have
conveyed to one having ordinary skill in the art that Appellant had
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possession of the concept of what is claimed. In re Anderson, 4 71 F .2d
1237, 1242 (CCPA 1973).
Here, there is no dispute that the Specification demonstrates that the
Inventor was in possession of contemplating and designing measurement
strategies for spectrally based measurements involving placement of sensors
or design of components. Although the Examiner finds that designing
measurement strategies based on ways to place sensors for particular
measurements is not the same as actually placing the sensors to obtain the
actual measurements, the Examiner fails to explain the significance of the
difference as it pertains to the Inventor's possession of the claimed
invention. In other words, the Examiner does not explain why those skilled
in the art would not have immediately recognized the placement of the
sensors to make the appropriate measurements once the measurement
strategy was designed based on a way to place those sensors. 5 As indicated
above, actual reduction to practice is not required to establish written
description. Ariad Pharma., 598 F.3d at 1352. Absent some explanation
regarding the significance of the difference between designing the placement
of the sensors and the actual placement of those sensors, we cannot say that
the Examiner has established, by a preponderance of the evidence, that the
originally-filed disclosure would not have reasonably conveyed to one
5 We note that recognition of possession of the actual placement of the
sensors based on the design of the placement of those sensors under the
written description requirement of the first paragraph of 35 U.S.C. § 112 is
distinct from the question whether the same disclosure enables those skilled
in the art with regard to how to place and use those sensors to perform the
appropriate measurements under the enablement requirement of this statute.
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having ordinary skill in the art that Appellant had possession of the now
claimed subject matter.
Accordingly, we do not sustain the Examiner's rejection of claims 1-
17 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
Rejection 2
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 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 Supreme Court's two-step 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. Kappas, 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
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mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (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
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
Supreme 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 176; 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 Supreme 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. (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 tum 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 ( quotation marks omitted). "A
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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. ( 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.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
guidance, 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 interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look 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 § 2106.0S(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.
See Memorandum.
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Here, the Examiner determines claim 1 is directed to the abstract idea
of (1) the collection and organization of data, and (2) to a mathematical
concept (Final 4). Specifically, the Examiner finds selecting a metric,
applying an optimization technique, obtaining an optimization parameter
value are the abstract ideas within these two categories (id.). In so finding,
the Examiner determines that these steps are similar to other concepts
identified by the courts to be abstract ideas: (1) for the collection and
organization of data, the Examiner cites SmartGene, Inc. v. Advanced
Biological Lab., SA, 555 F.App'x 950 (Fed. Cir. 2014), Cyberfone Systems,
LLC v. CNN Interactive Group, Inc., 558 F.App'x 988 (Fed. Cir. 2014),
Classen lmmunotherapies v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011),
and CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed
Cir. 2011 ); and (2) for a mathematical concept, the Examiner finds that the
Specification and drawings demonstrate the method performs various
mathematical operations and cites Benson, Flook, Diehr, and In re Grams,
888 F.2d 835 (Fed. Cir. 1989) (id.).
The Examiner next determines that the claims do not include
additional elements that are sufficient to amount to significantly more than
the abstract idea (Final 5). The Examiner finds the limitations, "said
independent measures comprising measures of a parameter of spectral
property being measured obtained using different measurement criteria,"
"wherein the measurement criteria include measuring a signal at different
point along a spectrum," and "wherein the measurement strategy resulting
from the number of independent measures is implemented by placement of
sensors or design of components that allow design of measurement by
sensors," are merely collection or insignificant extra-solution activities (id.).
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The Examiner also finds that placement of sensors is recited at a high level
of generality, as the details of the structural placement of sensors or design
components are absent (id.). And the Examiner finds the limitations,
"whereby such measurement are used in systems used in applications
including nucleic acid sequencing, high spatial density measurement of
spectrally based signals, including fluorescence, using scanners and cameras
including for nucleic acid and protein measurements," are nothing more than
generally linking the use of the abstract idea to a particular technological
environment or field of use (id.).
Appellant argues that the claims are directed to patent-eligible subject
matter (Appeal Br. 12). Appellant asserts that the claimed invention is
directed to designing measurement strategies that can significantly eliminate
stray signal, and provides more accurate results and facilitates effective
downstream processing (id. at 13). Appellant urges that the claimed
invention does not attempt to patent a mathematical formula (id.).
With regard to the Examiner's citation of case law as reflecting the
abstract idea set forth in the claims, Appellant asserts that the methods of
CyberSource and SmartGene "can be performed entirely in the human
mind" (id.). Appellant contends that "[a]pplying an optimization technique
to a cost metric is not a method that can be performed entirely in a human
mind" (id. at 14). Appellant further asserts that the Classen method simply
invites the reader to determine the content of the existing knowledge (id.).
Appellant contends that the claimed invention "does more than determining
the content of existing knowledge" (id.). Appellant also attempts to
distinguish over Cyberfone, contending that the claimed invention "is not
directed to collecting information in classified form" (id.).
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Further, Appellant contends that, although the Supreme Court
recognized that a mathematical formula like the Arrhenius equation is not
itself patent-eligible subject matter, even if limited to a particular
technological environment or accompanied by "insignificant post-solution
activity," the Court explained that claims are patent-eligible "when a claim
containing a mathematical formula implements or applies that formula
in a structure or process which, when considered as a whole, is performing a
function which the patent laws were designed to protect" (id., citing Diehr,
450 U.S. at 177 and 192). Appellant urges that the Diehr claims were
directed to an improvement in a process, not a mathematical formula (id.).
Therefore, Appellant argues that the claims should be compared to
those in Thales, asserting that the Thales court found that the claims were
nearly indistinguishable from those in Diehr and not directed to an abstract
idea (Appeal Br. 14--15, citing Thales Visionix Inc. v. United States, 850
F.3d 1343 (Fed. Cir. 2017)). Appellant also asserts the McRO court found
the claims allowed computers to produce accurate and realistic
synchronization and facial expressions in animated characters, "which is
performed using a computer but is not a computer improvement as in
Enfish" (id. at 15, citing McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299, 1314 (Fed. Cir. 2016)). Appellant contends that, as in
McRO, the claimed invention does not automate a process that was already
being carried out (id.).
Appellant next argues that the claimed invention is an improvement in
measurement technology for technologies where sensitivity and throughput
of measurements are increased and there is a need to significantly eliminate
stray signals, thereby reaching a new and useful end (Appeal Br. 16). As
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such, Appellant contends that the elements of the claimed invention are
sufficient to transform the process into an inventive application of an
abstract concept (if such an abstract concept is present) (id.).
Lastly, Appellant argues that the Examiner failed to properly consider
evidence that the
approach of using measures claimed in this invention is a
radical improvement over everything that is practiced in the
sector of instrumentation design. The concept of designing
measurement systems from an analytic end use perspective for
the level of data and accuracy needs associated with high-
density and high throughput systems has not been a practice
until the present application
(Appeal Br. 18). Appellant contends that this evidence is contrary to the
Examiner's determination that additional features of the claims are "well
understood, routine, conventional activities previously known to the
industry" (id.) ( emphasis omitted). Appellant asserts that the Examiner has
not presented any evidence that these additional features are conventional
and not inventive (id.).
Appellant's arguments are unpersuasive. Independent claims 1, 12,
and 16 are directed to a computer-implemented method, system, and
computer program product for devising spectrally based measurements.
Claims 1, 12, and 16 each recites, 6 among other things, selecting a number
of measurements along the spectrum, constituting at least one data set, and
selecting a metric for determining substantially optimal combination of true
positives and false positives in said at least one data set. Both of these steps
6 Appellant does not argue the claims separately so we do not analyze the
dependent claims separately from the independent claims. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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require judgment, may be performed in the human mind, and are, therefore,
mental processes.
Moreover, claims 1, 12, and 16 each recites, among other things,
applying an optimization technique; obtaining, from the results of the
optimization technique, a value for at least one optimization parameter, said
value for at least one optimization parameter resulting in substantially
optimal combination of true positives and false positives; wherein the
obtaining at least one optimization parameter comprises obtaining a value of
a number of independent measures; wherein obtaining a value of a number
of independent measures comprises obtaining at least one combination of a
value of a number of independent measures and a value for a confidence
measure; and said independent measures comprising measures of a
parameter of spectral property being measured obtained using different
measurement criteria.
The Specification discloses that the optimization uses algorithms and
mathematical relationships to obtain at least one optimization parameter and
a number of independent measures, including at least one combination of a
value of a number of independent measures and a value for a confidence
measure, so as to devise a measurement strategy for spectrally based
measurement results from the number of independent measures. For
example, paragraph 32 discloses that "a combination measure (e.g., a
number of measurements at relevant parts of the spectrum) and the
number of measures can be optimized using parameters and a cost function."
Paragraph 38 states that "the equations used to optimize selection of true and
false positives in comparative evaluations, methods for determining data-
specific thresholds and evaluating the statistic or mathematical criteria used
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for identifying differentials are applicable to many other types of datasets."
Paragraphs 39--45 disclose the algorithms and mathematical relationships
used to devise a measurement strategy. Paragraphs 46-77 disclose the
application of these algorithms and mathematical relationships to datasets
for devising measurement strategies. Therefore, claims 1, 12, and 16 are
directed to the abstract idea of using algorithms or mathematical
relationships to devise a measurement strategy for spectrally based
measurements.
The Federal Circuit noted that "analyzing information by steps people
go through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category," and "merely
presenting the results of abstract processes of collecting and analyzing
information, without more" is abstract and thus the claims focused on the
combination of these abstract ideas. Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016). The Federal Circuit has
summarized such a situation in this way:
We have explained that claims focused on "collecting
information, analyzing it, and displaying certain results of the
collection and analysis" are directed to an abstract idea.
Electric Power, 830 F.3d at 1353. "Information as such is an
intangible," hence abstract, and "collecting information,
including when limited to particular content (which does not
change its character as information), [i]s within the realm of
abstract ideas." Id. (citing cases). So, too, is "analyzing
information ... by mathematical algorithms, without more." Id.
at 1354 (citing cases, including Parker v. Flook, 437 U.S. 584,
98 S. Ct. 2522, 57 L. Ed. 2d 451 (1978), and Gottschalk v.
Benson, 409 U.S. 63, 93 S. Ct. 253, 34 L. Ed. 2d 273 (1972)).
And "merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as
identifying a particular tool for presentation), is abstract as an
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ancillary part of such collection and analysis." Id. ( citing
cases). The claims here are directed [to] abstract ideas under
those principles.
SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
Like the claims in Electric Power Group and SAP America, "[t]he
claims in this case are directed to abstract ideas. The focus of the claims, as
is plain from their terms, quoted above, is on selecting certain information,
analyzing it using mathematical techniques, and reporting or displaying the
results of the analysis. That is all abstract." SAP America, 898 F.3d at 1167.
Thus, in accordance with the PTO' s policy guidance, we identify claim 1 as
reciting both mental processes and mathematical concepts.
In accordance with the PTO' s policy guidance, and looking to MPEP
§ 2106.0S(a}-(c), (e}-(h), we determine that the additional elements of
claims 1, 12, and 16, both individually and as an ordered combination, do
not integrate a judicial exception, in this case abstract concepts, into a
practical application. Indeed, claim 1 is directed to little more than the
implementation of the abstract idea. Claim 12 is directed to a computerized
system that executes a similar method as claim 1, wherein the system
includes at least one generic processor and a computer usable media having
computer readable code. Claim 16 is directed to a computer program
product comprising computer usable medium having computer readable
code for causing a computer system to perform a similar method as claim 1.
Paragraphs 94 and 97 of the Specification, however, describe these
components in generic terms suggesting that these components are not
themselves improvements.
We also note that Appellant asserts that the claims are directed to
designing measurement strategies that can significantly eliminate stray
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signals. However, designing measurement strategies is not an integration of
the abstract concept into a practical application. We note claim 1 recites
"implementing a measurement strategy by placement of sensors or design of
components that allow design of measurement by sensors to implement the
number of independent measures." In addition, we note claim 1 recites
"whereby such measurement are used in systems used in applications
including nucleic acid sequencing, high spatial density measurement of
spectrally based measurement, including fluorescence, based signals using
scanners and cameras including nucleic acid and protein measurements."
Both of these recitations amount to no more than mere instructions to apply
the judicial exception. There is no indication that the implementation step
results in any change in either the placement of sensors or the design of
components that allow design of measurement of sensors, nor does the
implementation step include any use of the sensors or components that allow
design of measurement of sensors. Thus, unlike the claims in Diehr,
Appellant's claims do not result in the improvement in a physical process.
In view of the above, Appellant's contention that there is no
difference between the claims and those in Thales is unpersuasive. The
claims of Thales were directed to an unconventional physical arrangement of
inertial sensors and calculations based on a different reference frame to
reduce errors. Thales, 850 F.3d at 1348--49. Although their invention
regards mental and mathematical steps and or generic components ( e.g.,
when considered individually), Appellant does not explain how they are
"combined in an unconventional manner" that provides an improvement and
thus patent-eligible subject matter. See Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1300 (Fed. Cir. 2016) (citing DDR Holdings,
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LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256-59 (Fed. Cir. 2014) and
BASCOM Glob. Internet Servs. Inc. v. AT & T Mobility LLC, 827 F.3d 1341,
1349-52 (Fed. Cir. 2016)).
In view of the above, claims 1, 12, and 16 embody the implementation
of an abstract idea via a generic processor as a tool, as explained by the
Examiner. Implementing an idea on a generic processor does not transform
it into a patentable apparatus; the idea remains a pre-empted mental and
mathematical process. See Alice, 573 U.S. at 216 ("We have described the
concern that drives this exclusionary principle as one of pre-emption."),
citing Bilski v. Kappas, 130 S. Ct. 3218, 3231 (2010) ("upholding the patent
'would pre-empt use of this approach in all fields, and would effectively
grant a monopoly over an abstract idea'"). Claims 1, 12, and 16 involve the
sort of matter the Supreme Court cautioned against in Alice by stating
"transformation into a patent-eligible application requires 'more than simply
stat[ing] the [abstract idea] while adding the words 'apply it."' Id. at 221
(quoting Mayo, 566 U.S. at 72).
With regard to McRO, Appellant further argues that the claims do not
automate a process that was already being carried out. Appeal Br. 15. In
McRO, the Federal Circuit disagreed with a district court's determination
that claims were "drawn to the [abstract] idea of automated rules-based use
of morph targets and delta sets for lip-synchronized three-dimensional
animation." McRO, 837 F.3d at 1313 (quoting McRO, Inc. v. Sony
Computer, Entm 't Am., LLC, 55 F.Supp.3d 1214, 1226 (C.D. Cal. 2014)).
Instead, the Federal Circuit determined that "the claims are limited to rules
with specific characteristics." Id. More specifically, the Federal Circuit
stated:
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[a]s the district court recognized during claim construction, "the
claims themselves set out meaningful requirements for the first
set of rules: they 'define[] a morph weight set stream as a
function of phoneme sequence and times associated with said
phoneme sequence.'"
Id. The Federal Circuit determined "[t]he specific, claimed features of these
rules allow for the improvement realized by the invention." Id. Moreover,
the Federal Circuit recently stated: "[ o ]ur recent abstract idea exception
decisions likewise have stressed that a claimed invention must embody a
concrete solution to a problem having 'the specificity required to transform a
claim from one claiming only a result to one claiming a way of achieving
it."' Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1343 (Fed. Cir.
2018) (citing SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1021-22
(Fed. Cir. 2018) (collecting cases)).
A comparison of claims 1, 12, and 16 to claim 1 of McRO
demonstrates substantial differences between the facts of this appeal and the
facts of McRO. Claim 1 of McRO recites a method for automatically
animating lip synchronization and facial expression of 3-D characters
comprising, among other things, "obtaining a first set of rules that define
output morph weight set stream as a function of phoneme sequence and time
of said phoneme sequence." McRO, 837 F.3d at 1307---08. As noted above,
the Federal Circuit determined "the claims are limited to rules with specific
characteristics." Id. at 1313.
In contrast, Appellant's claims 1, 12, and 16 do not recite any rules
with specific characteristics. Although mathematical relationships and
algorithms are implicated in the recitations of claims 1, 12, and 16, these
claims do not actually recite any particular rules. Claims 1, 12, and 16
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generally recite selecting a metric for determining substantially optimal
combination of true positives and false positives in at least one data set,
applying an optimization technique, obtaining, from the results of the
optimization technique, a value for at least one optimization parameter
resulting in substantially optimal combination of true positives and false
positives, and implementing a measurement strategy by placement of
sensors or design of components that allow design of measurement by
sensors to implement the number of independent measures. Such a level of
generality does not limit the claims to rules with specific characteristics, as
inMcRO.
Finally, Appellant's argument that the Examiner failed to properly
consider the Gopalan Declaration is not persuasive. Appellant argues that
the Gopalan Declaration states that the
approach of using measures claimed in this invention is a
radical improvement over everything that is practiced in the
sector of instrumentation design. The concept of designing
measurement systems from an analytic end use perspective for
the level of data and accuracy needs associated with high-
density and high throughput systems has not been a practice
until the present application
(Appeal Br. 18). Though Appellant contends that this evidence is contrary
to the Examiner's determination that additional features of the claims are
"well understood, routine, conventional activities previously known to the
industry" (id.), we disagree. Appellant's evidence merely amounts to a
statement that the claimed invention is new and, therefore, cannot be well-
understood, routine, conventional activities previously known to the
industry. However, Appellant's argument misapprehends the burden on the
Examiner to establish that additional features of the claim are "well
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understood, routine, conventional activities previously known to the
industry." (Id.) ( emphasis omitted). The Examiner is not required to
establish that the claimed invention, as a whole, is well-understood, routine,
and conventional in the industry. Instead, the Examiner is required to
establish that the additional features, apart from the judicial exception, are
well-understood, routine, conventional in the industry. In this case, the
Examiner has met this burden by establishing that the additional features,
including mere data collection and a generic processor, are well-understood,
routine, and conventional in the industry (see Ans. 8-10).
Accordingly, we sustain the Examiner's rejection of claims 1-17
under 35 U.S.C. § 101 as directed to patent-ineligible subject matter.
DECISION
For the reasons given above and in the Appeal and Reply Briefs, the
decision of the Examiner rejecting claims 1-17 under 35 U.S.C. § 112, first
paragraph, is reversed.
However, upon consideration of the record and for the reasons given
above and in the Final Office Action and the Examiner's Answer, the
decision of the Examiner rejecting claims 1-17 under 35 U.S.C. § 101 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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