Ex Parte Huang et al

Patent Trial and Appeal Board

May 11, 2017

14026900 (P.T.A.B. May. 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. 14/026,900 09/13/2013 Biying Huang 2010467-0051 PRK-003C1 9286 24280 7590 05/15/2017 CHOATE, HALL & STEWART LLP TWO INTERNATIONAL PLACE BOSTON, MA 02110 EXAMINER BROOKS, DAVID T ART UNIT PAPER NUMBER 2156 NOTIFICATION DATE DELIVERY MODE 05/15/2017 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): patentdocket @ choate. com jnease@choate.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BIYING HUANG, SCOTT GREGORY FLICKER, WILLIAM B. BALLARD, ROBIN YOUNG SMITH, SEAN GERARD GREENHOW, and SHADRACK CGAR FRAZIER Appeal 2016-005188 Application 14/026,9001 Technology Center 2100 Before LARRY J. HUME, JAMES W. DEJMEK, and JOYCE CRAIG, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants have filed a request under 37 C.F.R. § 41.52 (hereinafter "Request") that we reconsider our Decision of February 23, 2017 (hereinafter "Decision"), in which we affirmed the rejections of claims 15 through 26 under 35 U.S.C. § 103 as being unpatentable over the combination of Dorsett and Smith. See Decision 5-12; and see Request 3- 10. 1 According to Appellants, the real party in interest is PerkinElmer Informatics, Inc. App. Br. 2. Appeal 2016-005188 Application 14/026,900 We have reconsidered our Decision in light of all of Appellants' arguments in the Request, and are not persuaded that we misapprehended or overlooked any points in rendering our Decision. We decline to change or modify our prior Decision for the reasons discussed infra. BACKGROUND2 Appellants contend the Board misapprehended or overlooked certain points of argument made by Appellants. Request 3 et seq. In particular, Appellants argue three main points: [(1) T]he Board "misapprehended" claims 15 and 21 as being "simply directed to storing and retrieving data in the field of analytical chemistry". Appellant respectfully submits that the claims are properly interpreted as including specific structural elements (i) that are relevant to Appellant's approach of predicting a best separation methodology for separating one or more chemical compounds in a sample and (ii) that distinguish the claims from the cited art. Request 3. Appellants further argue: [(2)] Because the Board misinterpreted the scope of claims 15 and 21, it "overlooked" Appellant's arguments that certain structural features within claims 15 and 21 distinguish the claimed invention from the teachings of Dorsett alone or in combination with the teachings of Smith. In particular, the Board overlooked Appellant's arguments presented in Section II of the Reply Brief, filed April 15, 2016 ("Reply Brief') that 2 Our Decision on Rehearing relies upon Appellants' Request for Rehearing ("Request," filed Apr. 20, 2017); Appeal Brief ("App. Br.," filed Aug. 31, 2015); Reply Brief ("Reply Br.," filed Apr. 15, 2016); Examiner's Answer ("Ans.," mailed Feb. 16, 2016); Final Office Action ("Final Act.," mailed Jan. 28, 2015); and the original Specification ("Spec.," filed Sept. 13,2013). 2 Appeal 2016-005188 Application 14/026,900 identify specific structural features recited within claims 15 and 21 and explain how they distinguish Appellant's claimed subject matter from the cited art. Id. [(3)] Finally, Appellant respectfully submits that Appellant's arguments in Section II of its Reply Brief, which the Board overlooked, were presented in response to a shift in the Examiner's position in the Examiner's Answer, mailed February 15, 2016 ("Examiner's Answer"). Id. REPRESENTATIVE CLAIM Claim 15, reproduced below, is representative of the subject matter on appeal (emphases added to limitations highlighted in the Request (3)): 15. An apparatus for electronically identifying a separation method for separating one or more chemical compounds in a sample, the apparatus comprising: a processor; and a memory having a set of instructions stored thereon, wherein the instructions, when executed by the processor, cause the processor to: (i) receive a user query comprising one or more criteria comprising at least one of a chemical structure, a chemical sub-structure, a separation method property, and a separation run property; (ii) access a relational database, wherein the relational database comprises: substance data corresponding to a plurality of substances, wherein each substance of the plurality of substances comprises a respective set of chemical substance properties, and each substance of the plurality of substances identifies one or more of a molecule, a biologic, an enzyme, and a protein; and 3 Appeal 2016-005188 Application 14/026,900 experimental run data from a plurality of completed separation experiments, wherein the experimental run data comprises a set of separation method properties and a set of separation run properties, wherein each separation method property of the set of separation method properties and each separation run property of the set of separation run properties is linked in the relational database to at least one respective chemical structure object of a plurality of chemical structure objects, wherein each chemical structure object of the plurality of chemical structure objects corresponds to one or more compounds separated in a respective separation experiment of the plurality of completed separation experiments, and wherein each chemical structure object of the plurality of chemical structure objects is linked in the relational database to a respective set of chemical structure properties associated with a particular substance of the plurality of substances; (iii) identify, within the relational database, responsive to the user query, query results, wherein the query results comprises at least one of: (a) one or more separation method properties corresponding to the one or more criteria, and (b) one or more separation run properties corresponding to the one or more criteria; and (iv) cause the presentation of the query results. 4 Appeal 2016-005188 Application 14/026,900 APPELLANTS' ARGUMENTS AND RESPONSE (1) The Board Properly Construed the Claims Appellants argue "claim 15 includes structural elements beyond a generic processor and memory." Request 4. Appellants then argue "Appellant's claimed subject matter is directed to identifying separation methods, and includes a relational database having a specific structure wherein links are established between separation method properties, separation run properties, chemical structure objects, chemical structure properties, and compounds separated in a separation experiment." Request 5. Appellants contend the above-identified claim limitations were argued in the Reply Brief in response the Examiner's Answer, and also argue our Decision does not reference the above elements of claims 15 and 21, but instead focuses on the recited processor, memory, and preamble of claim 15, and thus purportedly "misapprehends" the scope of the appealed claims. Request 5. As an initial matter of claim construction, we give the claim its broadest reasonable interpretation consistent with the Specification. See In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997). "In the patentability context, claims are to be given their broadest reasonable interpretations . . . limitations are not to be read into the claims from the specification." In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted). We disagree with Appellants' renewed contentions quoted above. We disagree because apparatus claim 15 only recites, as structural elements, "a processor," and "a memory having a set of instructions stored thereon." However, claim 15 functionally recites, "the instructions, when executed by 5 Appeal 2016-005188 Application 14/026,900 the processor, cause the processor to access a relational database, wherein the relational database comprises . . . [various types of data]." (Emphasis added). We again find the recited "cause the processor to access a relational database" step, is merely functional in nature, describing a function of the processor, and does not, on this record, impart any specialized structure to the apparatus. We further note, the recited "relational database" is not explicitly recited as being a part of the claimed apparatus. Instead, the recited "relational database," wherever it may be located, is simply accessed by the processor upon execution of instructions stored in the memory. Thus, under the broadest reasonable interpretation standard of claim construction, the relational database may be interpreted as not being a required part of the claimed apparatus.3 We reiterate that the contested functional limitations are statements of intended use that do not further limit the structure of the claimed apparatus. Our reviewing court guides that the patentability of an apparatus claim "depends on the claimed structure, not on the use or purpose of that structure." Catalina Marketing Int'l. Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002); see also Superior Industries, Inc. v. Masaba, Inc., 553 F. App’x 986, 991 (Fed. Cir. 2014) (Rader, J., concurring), which guides: 3 Even if our reviewing court were to hold that the recited relational database forms a part of the claimed apparatus, we note the argued "separation method properties, separation run properties, chemical structure objects, chemical structure properties, and compounds separated in a separation experiment" represent non-functional descriptive material, which does not confer patentability to the appealed claims. See Decision 9, n.7. 6 Appeal 2016-005188 Application 14/026,900 [A] system claim generally covers what the system is, not what the system does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990); see also Roberts v. Ryer, 91 U.S. 150, 157 [] (1875) ("The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not."). Thus, it is usually improper to construe non-functional claim terms in system claims in a way that makes infringement or validity turn on their function. Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1091 (Fed. Cir. 2009).[4] This reasoning is applicable to each of Appellants' apparatus claims 15-20 on appeal.4 5 Thus, we are not persuaded we misapprehended the scope of the claims on appeal. (2) The Board Considered Appellants' Arguments Appellants argue that, by affirming the Examiner's rejection, the Board must have overlooked specific arguments of Applicant's Reply Brief referencing the above identified elements of claims 15 and 21, which directly respond to and refute the Examiner's contention that Appellant's claimed subject matter lacks a structural difference that distinguishes it from the cited art and that the cited art is allegedly capable of performing the intended use (of identifying separation methods). Request 6. Appellants cite to their Reply Brief and argue, "Appellant's approach addresses a specific challenge of predicting a best separation methodology for separating one or more chemical compounds in a 4 Superior Industries is a recent non-precedential opinion of the Court of Appeals for the Federal Circuit. However, we consider the concurring opinion by former Chief Judge Rader as guiding because it cites precedential authority in support. 5 Appellants do not argue method claim 21 separately. 7 Appeal 2016-005188 Application 14/026,900 sample. The approach of Appellant's claimed subject matter achieves this desired functionality by virtue of a specific relational database that includes specific links between specific kinds of data." Id. (citing Reply Br. 10-13). Appellants further argue "this specific structure-a database wherein links are established between separation method properties, separation run properties, chemical structure objects, chemical structure properties and compounds separated in a separation experiment-is actively recited in the claims." Request 7. As we indicated in our Decision (see n.7), we are not persuaded the Examiner erred because Appellants' arguments are directed to the type of information stored in a database, i.e., links (a type of non-functional data) are stored in the database to point to variously recited types of non- functional descriptive material (data) in the database, which does not alter the operation of the recited apparatus, i.e., processor and memory, nor does the type of data affect the function of the processor and memory.6 6 We note the final limitation of claim 15, i.e., "a memory having a set of instructions stored thereon, wherein the instructions, when executed by the processor, cause the processor to . . . (iv) cause the presentation of the query results," also does not provide a functional relationship. See MPEP § 2111.05 (III), 9th ed., July, 2015 ("[Wjhere the claim as a whole is directed [to] conveying a message or meaning to a human reader independent of the intended computer system, and/or the computer-readable medium merely serves as a support for information or data, no functional relationship exists. For example, a claim to a memory stick containing tables of batting averages, or tracks of recorded music, utilizes the intended computer system merely as a support for the information. Such claims are directed toward conveying meaning to the human reader rather than towards establishing a functional relationship between recorded data and the computer."). 8 Appeal 2016-005188 Application 14/026,900 Accordingly, while we have considered all of Appellants' contentions, we find the arguments are not persuasive for the reasons stated in our Decision and as reiterated above. (3) The Examiner's Findings and Legal Conclusions did not Shift Appellants argue, "Appellant asserts that the portions of its Reply Brief identified in Section II of this paper are directly responsive to arguments raised in the Examiner's Answer, and they were overlooked by the Patent Trials and Appeal Board in rendering the Decision on Appeal." Request 9. "The Examiner's Answer presented a shift in the argument of the Final Rejection by specifically referencing claimed steps associated with storing and retrieving data and by expanding on the argument. . . ." Id.1 We disagree. We disagree because we have considered aft arguments presented by Appellants, as explicitly stated in our Decision.7 8 Although we considered all of Appellants' arguments, we were not persuaded of Examiner error for the reasons stated above. Moreover, we find, contrary to Appellants' arguments (Request 9), the Examiner did not shift the thrust of the rejection, but instead merely elaborated on, and buttressed his findings in light of Appellants' arguments 7 We note the Board, as well as Examiners, make findings of fact, reach conclusions of law, and make decisions regarding the exercise of discretion, but do not make "arguments," "contentions," "admissions," or "concessions," because neither the Examiner nor the Board are parties in any ex parte proceeding. 8 "In reaching this decision, we consider all evidence presented and all arguments actually made by Appellants. We do not consider arguments that Appellants could have made but chose not to make in the Briefs, and we deem any such arguments waived." Decision 5. 9 Appeal 2016-005188 Application 14/026,900 in the Appeal Brief. Compare Final Act. 5 and 7-12, with Ans. 2-6. We find it was not error for the Examiner to respond to Appellants' arguments using different language, or restating the reasoning of the rejection in a different way, so long as the evidence relied upon is the same and the "basic thrust of the rejection" is the same. See In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976). Based on the findings above, on this record, we are not persuaded we misapprehended or overlooked Appellants' arguments, nor are we persuaded the Examiner erred in rejecting the claims on appeal. CONCLUSION For the aforementioned reasons, Appellants' contentions have not persuaded us of substantive error in our February 23, 2017 Decision. Accordingly, we have granted Appellants' Request for Rehearing to the extent that we have reconsidered our Decision. However, Appellants' Request is denied with respect to making any changes to the ultimate outcome of our Decision on the rejections on appeal addressed therein. DECISION We have considered all the arguments raised by Appellants in the Request, but Appellants have not persuaded us that we misapprehended or overlooked any points in rendering our Decision such that we decline to change or modify our prior Decision for the reasons discussed, supra. 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)(iv). REHEARING DENIED 10