Ex Parte Iyengar et al

Patent Trial and Appeal BoardAug 16, 2017

12882761 (P.T.A.B. Aug. 16, 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. 12/882,761 09/15/2010 Sridhar Iyengar AGAM.P-060 3542 57381 7590 08/16/2017 Larson & Anderson, LLC P.O. BOX 4928 DILLON, CO 80435 EXAMINER JANG, CHRISTIAN YONGKYUN ART UNIT PAPER NUMBER 3735 MAIL DATE DELIVERY MODE 08/16/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte SRIDHAR IYENGAR and IAN HARDING ____________________ Appeal 2015-006229 Application 12/882,761 Technology Center 3700 ____________________ Before BRANDON J. WARNER, PAUL J. KORNICZKY, and BRENT M. DOUGAL, Administrative Patent Judges. DOUGAL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1–22 under 35 U.S.C. § 101. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on August 7, 2017. We reverse. Appeal 2015-006229 Application 12/882,761 2 CLAIMED SUBJECT MATTER The claims are directed to methods related to an implantable biosensor system. Claims 1 and 11 are the independent claims on appeal. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for determination of the thickness of a polymer layer in an implantable biosensor comprising an electrode and the polymer layer, wherein the polymer layer contains an enzyme, said method comprising the steps of: (a) placing the biosensor in contact with a solution; (b) applying a potential (V) to the biosensor sufficient to oxidize or reduce a redox active species in the solution and generate a current, (c) switching off the applied potential and observing subsequent decay of potential to obtain a plurality of V versus time (t) data points, and (d) determining the slope (k) of a plot of V versus l/√t, wherein the slope (k) provides an indication of the thickness of the polymer layer. OPINION The Examiner rejects claims 1–22 under 35 U.S.C. § 101 as being “directed to the abstract idea of a mathematical relationship or formula.” Final Act. 2. The Examiner, without providing further analysis, determines that “all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.” Id. The Supreme Court has set forth “a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). Under that framework, we first “determine whether the claims at Appeal 2015-006229 Application 12/882,761 3 issue are directed to one of those patent-ineligible concepts”—i.e., a law of nature, a natural phenomenon, or an abstract idea. Id. (citing Mayo, 132 S. Ct. at 1296–97). The Federal Circuit has instructed that “[t]he ‘directed to’ inquiry . . . [does not] simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). The Courts continues: “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Id. (citing Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). It is only after the claims have been determined to be “directed to” a patent-ineligible concept that we secondly “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.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298, 1297). Under the first step of the Alice framework, the Examiner determines that the claims are directed to an abstract idea because “the calculation of a slope is clearly a mathematical determination using mathematical relationships and/or formulas.” Ans. 2. However, though both independent claims 1 and 11 include the step of “determining the slope,” the Examiner has not sufficiently shown that the claims are directed to an abstract idea. Appeal 2015-006229 Application 12/882,761 4 Appellants argue that the claims “provide a method for determining the thickness of a polymer layer in an implantable biosensor and determine the amount of analyte in a sample using a biosensor,” which are “real-world functions . . . tied to biosensors.” Appeal Br. 3. Further, Appellants note that the “claims result in a change in a redox active species (either being oxidized or reduced by applying a potential to a biosensor).” Id. We determine that the claims here are directed to an improvement in functionality of a biosensor—specifically, determination of the thickness of an enzyme-containing polymer layer therein, for which determining the slope is only one applied part thereof. Thus, we agree with Appellants that the claims “are directed to processes that recite[] meaningful limitations that limit the practical applications of the claimed processes,” which “do not seek to tie up [a] judicial exception.” Id. at 4. For these reasons, we do not sustain the Examiner’s rejection. DECISION The Examiner’s rejection of claims 1–22 is reversed. REVERSED