Ex Parte Jung et al

Patent Trials and Appeals Board

Jun 19, 2019

11893612 - (D) (P.T.A.B. Jun. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/893,612 08/15/2007 Edward K.Y. Jung
80118 7590 06/21/2019
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
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.
GS 1-0984-US 5147
EXAMINER
LIN,JERRY
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
06/21/2019 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):
admin@constellationlaw.com
Ty ler@constellationlaw.com
ISFDocketlnbox@intven.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD K.Y. JUNG, ROYCE A. LEVIEN,
ROBERT W. LORD, MARK A. MALAMUD, and
LOWELL L. WOOD JR. 1
Appeal2018-002829
Application 11/893,612
Technology Center 1600
Before DONALD E. ADAMS, ERIC B. GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims relating to a
method for determining allergy risk, which have been rejected as obvious
and as directed to patent-ineligible subject matter. We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify the Real Party in Interest as Gearbox, LLC. Appeal Br.
4.
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Application 11/893,612
STATEMENT OF THE CASE
The Specification discloses a system that can be used "to determine
allergy susceptibility or risk in a population, including an individual, for a
given allergy by analyzing innate ( e.g., genetic) determinants and acquired
( e.g., environmental) determinants that together are associated with ... a
risk for future allergy symptoms." Spec. ,r 32.
An "innate determinant" can be a genetic sequence, gene expression,
epigenetic information, biochemical information, cell population
information, or total IgE levels that are not associated with an allergy. Id.
,r 4 7. An "acquired determinant" can be "environmental exposure
information or immunologic measures that reflect environmental exposure
information .... Alternatively, for example, dietary, nutraceutical, or
medical regimen information may be the acquired determinant." Id. ,r 49.
"Allergy risk information, including ingestion-dependent allergy risk
information, may be, for example, a combination of innate and acquired
allergy determinants together with associated allergy symptoms. Such
allergy risk information may be reported in, for example, allergy studies."
Id. ,I 50.
The Specification describes an allergy data analysis system that is
used by a researcher "to enter, store, request, or access study data relating to
innate allergy determinants, acquired allergy determinants, and/ or subject
medical history data." Id. ,r 53. The system includes "study data 106." Id.,
Fig. 1. The study data can be "allergy test data" and may originate from
"published journal articles, clinical trial reports including medical history
data, data reported on internet site(s), data submitted to the Food and Drug
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Administration," data included in various types of databases, or data from
mathematical or computer simulations. Id. ,r,r 54, 55.
Claims 48-50, 54--57, 59, 63, 65, 66, 68-70, 74--77, 79, 83, 85, 86,
88-94, and 100-104 are on appeal. Claim 48 is illustrative and reads as
follows:
48. A method comprising:
accepting an input identifying at least one allergy;
searching an individual's health data to identify at least one self-report
of a reaction associated with the at least one allergy;
determining at least one innate allergy determinant associated with the
at least one allergy;
selecting one or more allergy tests based on the at least one self-
reported reaction and the at least one innate allergy determinant
associated with the at least one allergy;
detecting at least one acquired allergy determinant of the at least one
allergy based on information from at least one selected allergy
test;
determining, based on the innate and acquired allergy determinants,
ingestion-dependent allergy risk information for the individual;
and
presenting a signal related to ingestion-dependent allergy risk
information for the individual in response to determining, based
on the innate and acquired allergy determinants, the ingestion-
dependent allergy risk information for the individual,
wherein at least one of the accepting, searching, selecting, identifying,
determining, or presenting is at least partially implemented
using one or more processing devices.
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Claims 68, 88, and 92 are also independent and are directed to a
system ( claims 68 and 92) or a computer program product ( claim 88) for
carrying out the method that is defined by claim 48.
The claims stand rejected as follows:
Claims 48-50, 54--57, 59, 63, 65, 66, 68-70, 74--77, 79, 83, 85, 86,
88-94, and 100-1042 under 35 U.S.C. § I03(a) as obvious based on Qiao 3
and Liew4 (Ans. 4) and
Claims 48-50, 54--57, 59, 63, 65, 66, 68-70, 74--77, 79, 83, 85, 86,
88-94, and 100-104 under 35 U.S.C. § 101 as directed to subject matter that
is ineligible for patenting (Ans. 3).
Obviousness
The Examiner rejects all of the claims on appeal as obvious based on
Qiao and Liew. The Examiner finds that Qiao discloses a method that
includes all of the active steps of claim 48 but "do[ es] not explicitly teach
using a microprocessor, computer program product, or a computing device."
Ans. 4--5. The Examiner finds that "Liew teach[ es] a general method of
identifying biomarkers as well as diagnosing disease. Liew discloses using a
2 The statement of the rejection does not include claims 100-104. Ans. 4.
However, those claims were addressed in the body of the rejection. See id. at
4 ("Regarding claims . . . 1 0 3, and 104, . . . "), 5 ("Regarding claims 1 00-
102, ... "). Appellants recognized that the rejection included claims 100-
104. See Appeal Br. 16 (heading "VI").
3 Qiao et al., "Specific Serum IgE Levels and FcERIB Genetic
Polymorphism in Patients with Penicillins Allergy," 59 Allergy 1326-1332
(2004).
4 Liew, US 2007/0054282 Al, published Mar. 8, 2007.
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Scanalyzer ... , which would require a computer with inputs,
microprocessor, software, user interface, circuitry, computer readable
medium, recordable medium, and communication medium." Id. at 5. The
Examiner concludes that it would have been obvious "to implement the
processes of Qiao et al. on a computer and with computer programming"
because "implementing a known function on a computer has been deemed
obvious to one of ordinary skill in the art." Id. at 6. The Examiner also finds
that
Id.
one of ordinary skill in the art would have combined the
computer system of Liew with the process of Qiao et al. to gain
the benefit of creating a system to determine if a patient has an
allergy. Qiao et al. has identified genetic polymorphisms which
contribute to allergies to penicillins (abstract). Liew teaches that
their system may be used to diagnose conditions via biomarkers
(paragraph 0008). Thus, one of ordinary skill in the art would
have been motivated to use the genetic polymorphisms
discovered by Qiao et al. as biomarkers in the system of Liew
to determine if an individual has a penicillin allergy.
We agree with the Examiner's fact-finding, reasoning, and
conclusion. Qiao states that "[ n ]umerous studies have suggested that both
genetic and environmental influences are involved in the pathogenesis of
allergic disease." Qiao 1326, abstract. Qiao discloses that "[a]llergy to B-
lactam drugs is commonly reported, ... especially penicillins allergy." Id. at
1326, left col. Thus, Qiao's method identifies an allergy; specifically,
penicillins allergy.
Qiao's study involved "448 patients with penicillins allergy ... and
101 control subjects." Thus, Qiao's study included searching the patients'
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health data to identify whether they were allergic to penicillins; i.e., to
identify a self-report of a reaction associated with penicillins allergy.
Qiao discloses that an "amino acid substitution (glutamic acid ~
glycine) at position 237 in the FcERIB gene has been associated with total
and specific IgE levels and with atopic asthma." Id. at 1327, left col. Thus,
Qiao discloses determining an innate allergy determinant; see Spec. ,r 4 7
(innate determinants include total IgE levels that are not associated with an
allergy).
Qiao's "[p]atient selection was based on a positive skin test or clinical
symptoms after penicillins therapy." Id. at 1327, left col. Qiao "assay[ed]
eight kinds of specific IgE antibodies to different penicillins antigenic
determinants in sera by using RAST [radioallergosorbent test]." Id. Qiao's
process thus included selecting an allergy test ( skin test or RAST) based on a
self-reported reaction and innate allergy determinant.
Qiao' s method includes detecting an acquired determinant based on
information from the allergy test; specifically, a positive skin test upon
environmental exposure to a penicillin. Qiao also reports that "[t]he positive
rate of specific IgE antibodies in 448 patients was 58.26%." Qiao 1328, left
col. Cf Spec. ,r 49 ("[A] measure of specific IgE may be the acquired
determinant.").
Qiao reports that its "results suggest that the E237G variant of the
FcERIB gene [innate determinant] is involved in the development of
penicillin allergy [ upon exposures to penicillins; acquired determinant]
through the process for the production of specific IgE antibodies." Id. at
1331, left col. Qiao also reports that its "results showed the positive reaction
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degree of skin test was significantly correlated with specific IgE antibodies.
This fact suggests that RAST is a safe, effective approach to identifying
patients at risk or those not at risk for allergic reaction to penicillin." Id. at
1330, right col. Thus, Qiao determines, based on innate and acquired allergy
determinants, penicillins ingestion-dependent risk information for an
individual. Qiao also presents a signal related to that ingestion-dependent
risk information (patient is at risk or not at risk for allergic reaction to
penicillins).
Liew discloses a computer-based method for identifying biomarkers
that are useful in diagnosing a condition. Liew ,r 8 (The "invention provides
methods to identify biomarkers useful for diagnosing a condition."); ,r 106
("[fJollowing hybridization of an array with one or more labeled target
nucleic acid samples, arrays are scanned immediately using a GMS Scanner
418 and Scanalyzer software ... , followed by GeneSpringâ„¢ software ...
analysis."); ,r 112 ("[A] linear regression approach is used for normalization .
. . . The average of the ratios is calculated and ... used to identify
differentially expressed genes.").
We agree with the Examiner that it would have been obvious to a
person of ordinary skill in the art to combine Qiao' s method of determining
risk of penicillins allergy, based on a polymorphism in the FcERIB gene and
ingestion of a penicillin, with Liew' s computer-based system for diagnosing
a condition based on biomarkers. As the Examiner found, "implementing a
known function on a computer has been deemed obvious to one of ordinary
skill in the art." Ans. 6.
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And, as the Examiner also found, id., Qiao provides the skilled artisan
with a specific reason to combine its teachings with Liew: in order to create
a computer-based system for determining whether a patient has a
polymorphism in the FcERIB gene that indicates an increased risk of
penicillins allergy. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416
(2007) ("The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.");
id. at 421 ("When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within
his or her technical grasp.").
Appellants argue that several "recitation[ s] of amended claim 48 [are]
neither disclosed nor fairly suggested by the pinpoint-cited portions of the
technical materials cited by the USPTO." Appeal Br. 18. See also id. at 19
("[T]he cited portions of Qiao and Liew neither disclose, nor fairly suggest"
the same limitations.) For the reasons discussed above, we disagree.
Appellants argue that "Qiao and Liew neither disclose nor fairly
suggest at least 'presenting a signal related to ingestion-dependent allergy
risk information for the individual in response to determining, based on the
innate and acquired allergy determinants, the ingestion-dependent allergy
risk information for the individual' of amended claim 48." Id. at 19.
Again, we disagree. Qiao discloses a method of determining, based on
a polymorphism in the FcERIB gene, whether a patient is at increased risk of
having an allergy to penicillins. It would have been obvious, to a person of
ordinary skill in the art practicing Qiao' s method, to inform the patient of the
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increased risk of penicillins allergy after it was detected, so that the patient
could avoid exposure to penicillins in the future. Thus, Qiao fairly suggests
"presenting a signal related to ingestion-dependent allergy risk information
for the individual in response to determining, based on the innate and
acquired allergy determinants, the ingestion-dependent allergy risk
information for the individual," as recited in claim 48.
Appellants rely on the same arguments with regard to independent
claims 68, 88, 92. See Appeal Br. 21, 23, 25. The arguments are not
persuasive for the reasons discussed above with respect to claim 48.
Claims 49, 50, 54--57, 59, 63, 65, 66, 69, 70, 74--77, 79, 83, 85, 86,
89-91, 93, 94, and 100-104 were not argued separately and therefore fall
with claims 48, 68, 88, and 92. 37 C.F.R. § 4I.37(c)(l)(iv).
Patent Eligibility
The Examiner has rejected all of the claims on appeal as being
directed to patent-ineligible subject matter. The Examiner finds that
[t]he claimed system and method includes the steps of
accepting an input, searching health data, selecting allergy tests,
identifying allergy determinants, and presenting a signal.
However, each of these steps are considered to be "an idea 'of
itself'". Thus, the claimed invention is drawn to an abstract
idea.
Ans. 3. The Examiner also finds that each of the steps of claim 48 "also may
be interpreted as mental steps that may be performed by hand with pen and
paper," id. at 6, and therefore the claims are "drawn to the judicial exception
of an abstract idea." Id. at 7.
Appellants argue that the claims are not directed to an abstract idea
because they are not similar to concepts that have previously been held to be
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abstract. Appeal Br. 10-13. Appellants also argue that the claims add
"significantly more" to any recited abstract idea, and constitute
improvements to another technology or technical field, as well as
improvements to the functioning of a computer itself. Id. at 13-15.
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 concluded that "[l]aws of nature, natural
phenomena, and abstract ideas" are not patentable under 35 U.S.C. § 101.
See, e.g., Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014).
To determine if a claim falls into an excluded category, we apply a
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)). We first determine what 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.").
Patent-ineligible abstract ideas 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 mental processes (Gottschalkv. Benson,
409 U.S. 63, 69 (1972)). In contrast, patent-eligible inventions 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 183 n. 7
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(quoting Corning v. Burden, 56 U.S. 252, 267-68 (1853))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
In Diehr, the claimed method employed 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."). The
Supreme Court noted, however, 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, and "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 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 (alterations in original)). "[M]erely
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requir[ ing] generic computer implementation[] fail[ s] to transform that
abstract idea into a patent-eligible invention." Id.
The USPTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (January 7, 2019) ("Memorandum"). Under that guidance, we
first determine whether the claim recites:
( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts; certain methods of organizing
human activity 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 determine whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
a "well-understood, routine, conventional activity" 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.
Guidance Step 2 (a). Prong 1
Following the Guidance, we first consider whether the claims recite a
judicial exception. The Examiner finds that
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[t]he claimed system and method includes the steps of
accepting an input, searching health data, selecting allergy tests,
identifying allergy determinants, and presenting a signal.
However, each of these steps are considered to be "an idea 'of
itself'". Thus, the claimed invention is drawn to an abstract
idea.
Ans. 3. The Examiner further finds that "the steps of accepting an input,
searching health data, selecting allergy tests, identifying allergy
determinants, and presenting a signal also may be interpreted as mental steps
that may be performed by hand with pen and paper." Id. at 6. The Examiner
concludes that "the instant claims are also drawn to the judicial exception of
an abstract idea." Id. at 7.
We agree with the Examiner that claim 48 recites a judicial exception.
The Guidance identifies "mental processes----concepts performed in the
human mind (including an observation, evaluation, judgment, opinion)"-as
abstract ideas. Memorandum 52 (footnote omitted); see also Mayo, 566 U.S.
at 71 ("[M]ental processes[] and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work.").
Claim 48 recites seven steps, all of which can be carried out mentally
or using a pen and paper. The first step is "accepting an input identifying at
least one allergy," which requires no more than reading or listening to an
identification of an allergy.
The second step is "searching an individual's health data to identify at
least one self-report of a reaction associated with the at least one allergy,"
which also requires no more than reading an individual's medical records to
identify an instance in which the individual reported an allergic reaction
corresponding to the allergy identified in the first step.
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The third step is "determining at least one innate allergy determinant
associated with the at least one allergy." An innate allergy determinant can
be a genetic sequence, gene expression, epigenetic information, biochemical
information, cell population information, or total IgE levels that are not
associated with an allergy. Spec. ,r 47. This step can also be performed
mentally because it reads on, for example, reading technical literature to
identify a genetic sequence that has been associated with the subject allergy.
The fourth step is "selecting one or more allergy tests based on the at
least one self-reported reaction and the at least one innate allergy
determinant associated with the at least one allergy." Selecting a test can be
performed mentally, and the factors on which that selection is based can also
be considered in the mind of the person making the selection.
The fifth step is "detecting at least one acquired allergy determinant of
the at least one allergy based on information from at least one selected
allergy test." An acquired allergy determinant can be "environmental
exposure information or immunologic measures that reflect environmental
exposure information .... Alternatively, for example, dietary, nutraceutical,
or medical regimen information may be the acquired determinant." Spec.
,r 49. Thus, this step reads on, for example, viewing the result of a skin test
to determine exposure to the subject allergen. See Spec. ,r 52 ("[I]dentify at
least one acquired allergy determinant ( e.g., IgE test result, skin test result,
food challenge test result, etc.)"); id. at ,r 39 ("[S]kin tests us[ e] the allergen
to elicit a skin reaction in allergic subjects"); id. at ,r 36 ("Allergies are
thought to be caused by environmental exposure to allergens.").
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The sixth step is "determining, based on the innate and acquired
allergy determinants, ingestion-dependent allergy risk information for the
individual." This step simply requires analyzing an innate allergy
determinant ( e.g., the presence or absence of a genetic sequence that has
been linked to the subject allergy) and an acquired allergy determinant ( e.g.,
a positive skin test indicating exposure to, and allergic reaction to, the
subject allergen) in order to determine whether the individual is at a higher
risk of an allergic reaction upon ingesting a certain substance. This analysis
can be done in a person's mind, and is therefore a mental step.
Finally, claim 48 recites "presenting a signal related to ingestion-
dependent allergy risk information for the individual in response to
determining, based on the innate and acquired allergy determinants, the
ingestion-dependent allergy risk information for the individual." This step
reads on conveying information; e.g., by writing the information on a piece
of paper. The final step of the claimed process therefore also is one that can
be carried out mentally or with a pen and paper, and therefore amounts to a
mental process. See CyberSource Corp. v. Retail Decisions, Inc., 654 F .3d
1366, 1372 (Fed. Cir. 2011) ("It is clear that unpatentable mental processes
are the subject matter of claim 3. All of claim 3's method steps can be
performed in the human mind, or by a human using a pen and paper.").
We therefore conclude that each of the active steps of claim 48 recites
a mental process, which is one of the groups of patent-ineligible subject
matter identified in the Guidance, and thus claim 48 recites an abstract idea.
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Guidance Step 2 (a). Prong 2
Because claim 48 recites a judicial exception, the Guidance directs us
to next consider whether the claim integrates the judicial exception into a
practical application. Along with the recited mental steps, claim 48 includes
a "wherein" clause that states that "at least one of the accepting, searching,
selecting, identifying, determining, or presenting is at least partially
implemented using one or more processing devices." Claim 48. However,
"the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention." Alice, 573 U.S. at
223. Thus, the "wherein" clause of claim 48 does not recite additional
elements that integrate the judicial exception into a practical application, and
the claim is directed to a judicial exception.
Guidance Step 2(b)
Finally, the Guidance directs us to consider whether claim 48 includes
"additional elements ... [that] provide[] 'significantly more' than the recited
judicial exception." Memorandum, 84 Fed. Reg. at 56. The Guidance states
that an additional element that "simply appends well-understood, routine,
conventional activities previously known in the industry, specified at a high
level of generality, to the judicial exception, ... is indicative that an
inventive concept may not be present." Id.
it will be understood by those within the art that
Here, as discussed above, the only element recited in claim 48, other
than the steps that can be carried out mentally or with pen and paper, is the
"wherein" clause stating that at least one of the steps is carried out using a
processing device. Searching records, comparing and analyzing information,
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and outputting a signal, however, are routine and conventional uses for a
processing device. See, e.g., Spec. ,r 229 ("[E]ach function and/or operation
within such block diagrams, flowcharts, or examples can be implemented,
individually and/or collectively, by a wide range of hardware, software,
firmware, or virtually any combination thereof."). Therefore, claim 48
"simply appends well-understood, routine, conventional activities previously
known in the industry, specified at a high level of generality, to the judicial
exception." Memorandum, 84 Fed. Reg. at 56. 5 Claim 48 does not recite
additional elements that provide significantly more than the judicial
exception, and thus the claim as a whole is patent-ineligible.
Appellants' Arguments
Appellants argue that the US PTO' s Examination Guidance issued
December 16, 2014, and updated July 1, 2015, states that whether claims are
directed to an abstract idea should be determined based on similarity of the
claims to a concept that courts have identified as an abstract idea. Appeal Br.
11-13. Appellants argue that "no court has adjudicated 'a system and
method of determining and presenting the ingestion-dependent allergy risk
information' (which the USPTO identifies the method to be drawing [sic,
drawn] to on page 4 of the Office Action) to be abstract." Id. at 13. 6
5 We also note that the affirmed obviousness rejection demonstrates that the
claims do not add any specific limitations beyond the judicial exception that
are not "well-understood, routine, conventional activities."
6 Appellants cite claim 92 in presenting this argument. Appeal Br. 10-11,
13. Claim 92, however, is directed to a "system" that consists of "circuitry"
for carrying out each of the active steps recited in claim 48. Appeal Br. 37
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This argument is unpersuasive. The relevant question is not, as
Appellants frame it, whether a court has previously adjudicated the precise
invention of the claims on appeal to be patent-ineligible, but whether the
claims are directed to a concept, such as mental processes, that have been
held to be a judicial exception. For the reasons discussed above, claim 48 is
directed to a judicial exception without significantly more and is therefore
patent-ineligible.
Appellants also argue that "at least the amended independent claims
recite structures which constitute at least 'Meaningful limitations beyond
generally linking the use of an abstract idea to a particular technological
environment,'" which the USPTO identified as among the "[!]imitations ...
that may be enough to qualify as 'significantly more' when recited in a claim
with an abstract idea" in instructions issued June 25, 2014. Appeal Br. 14.
Appellants argue that "combining self-reported incidents with empirical data
goes substantially beyond the mere 'linking the use of an abstract idea to a
particular technological environment."' Id. at 15.
This argument is unpersuasive for the reasons discussed above: all of
the active steps of claim 48 could be carried out in the mind or using a pen
and paper, and therefore encompass mental processes. Each of the steps, and
the combination of recited steps, fall into one of the accepted categories of
abstract ideas, and claim 48' s requirement that at least one of the steps be
carried out using a processing device, stated at a high level of generality,
(Claims Appendix). Thus, the analysis presented above regarding claim 48
applies equally to claim 92.
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does not add significantly more to the recited abstract idea so as to transform
it into a patent-eligible application of the abstract idea.
Finally, Appellants argue that the claims constitute
"[i]mprovements to another technology or technical fields" and
"[i]mprovements to the functioning of the computer itself."
Specifically, Independent Claim 92 constitutes an improvement
to the field of biologic testing by using data gathered from
multiple sources, including the subject, to develop a prospective
risk assessment for the subject, rather than merely avoiding or
treating reactions to allergens, allowing for broader, more
comprehensive health care than might otherwise be available
through standard test methods.
Appeal Br. 15.
This argument is unpersuasive. First, Appellants do not explain how
using a computer in its conventional operations of searching and analyzing
data, as recited in claim 48, results in any specific improvement in the
function of the computer itself. Second, claim 48 does not constitute an
"improvement to another technology or technical field[]"because it is
directed to an abstract idea made up of mental steps without significantly
more; the specific types of data to be viewed and analyzed do not change the
nature of the claim, which remains an abstract idea. "[L ]imiting the use of an
abstract idea to a particular technological environment" does not confer
patent-eligibility. Alice, 573 U.S. at 223 (internal quotation marks omitted).
See also id. at 225-226: "The method claims do not ... effect an
improvement in any other technology or technical field. Instead, the claims
at issue amount to 'nothing significantly more' than an instruction to apply
the abstract idea ... using some unspecified, generic computer." (Citation
omitted.) The Alice Court's analysis applies equally to the instant claims.
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Appeal2018-002829
Application 11/893,612
We affirm the rejection of claim 48 under 35 U.S.C. § 101. Claims 49,
50,54-57,59,63,65,66,68-70, 74--77, 79,83,85,86,88-94,and 100-104
were not argued separately and therefore fall with claim 48. 37 C.F.R.
§ 4I.37(c)(l)(iv).
SUMMARY
We affirm both of the rejections on appeal.
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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