Ex Parte Kuhlmann et al

Patent Trial and Appeal Board

Mar 28, 2017

12938953 (P.T.A.B. Mar. 28, 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.
12/938,953 11/03/2010 Frank E. Kuhlmann 20100169-01 4439
7590
Agilent Technologies, Inc. in care of:
CPA Global
P. O. Box 52050
Minneapolis, MN 55402
EXAMINER
DEJONG, ERIC S
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
03/30/2017 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):
IPOPS .LEGAL @ agilent.com
Agilentdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK E. KUHLMANN, HELOISE LOGAN,
STEVEN M. FISCHER, and XIANGDONG DON LI1
Appeal 2016-005805
Application 12/938,953
Technology Center 1600
Before DONALD E. ADAMS, RICHARD J. SMITH, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of curating a mass spectral library. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm the rejection under 35 U.S.C. § 101.
1 According to Appellants, the real party in interest is Agilent Technologies,
Inc. (Appeal Br. 3.)
Appeal 2016-005805
Application 12/938,953
STATEMENT OF THE CASE
Claims on Appeal
Claims 1—9 and 20-22 are on appeal.2 (Claims Appendix, Appeal Br.
13—15.) Claim 1 is illustrative and reads as follows:
1. A method of curating a mass spectral library, comprising
(a) obtaining an experimentally derived mass spectrum of a compound
of interest;
(b) identifying a peak in the mass spectrum that represents an
experimental m/z value for an ion fragment of the compound of interest;
(c) after said peak has been identified, removing from the mass
spectrum all peaks that do not correspond to the compound of interest to
produce an uncurated mass spectrum for the compound of interest; and
(d) replacing the experimental m/z value for the peak identified in step
(b) in said uncurated mass spectrum with a theoretically calculated m/z value
for the ion fragment, thereby generating a curated mass spectrum for said
compound of interest.
Examiner’s Rejections
1. Claims 1—9 and 20-22 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter (abstract idea). (Ans. 2-4.)
2. Claims 1—3 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Olsen.3 (Mat4—6.)
3. Claims 1—5 and 20-22 stand rejected under 35 U.S.C. § 103(a) as
2 Claims 10-17 are withdrawn as drawn to non-elected subject matter.
(Final Act. 2, dated April 24, 2015). The abbreviation m/z used in the
claims refers to mass-to-charge. (Spec. 19.)
3 Olsen et al., Parts per Million Mass Accuracy on an Orbitrap Mass
Spectrometer via Lock Mass Injection into a C-trap, Molecular & Cellular
Proteomics 4.12, 2010-21 (2005) (“Olsen”).
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Appeal 2016-005805
Application 12/938,953
unpatentable over Olsen and Darland.4 (Id. at 6—8.)
4. Claims 1—3, 6—9, and 20-22 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Olsen and Hill.5 (Id. at 8—9.)
FINDINGS OF FACT
We adopt as our own the Examiner’s findings regarding the rejection
under 35 U.S.C. § 101. The following findings are included for emphasis
and reference purposes.
FF 1. The Specification states “[wjhere the presented methods refer to
manipulations that are commonly associated with mental operations, such as,
for example, curating, obtaining, calculating, correcting, or conducting, no
such capability of a human operator is necessary. In other words, any and
all of the operations described herein may be machine operations.” (Spec.
131.)
FF 2. The Examiner finds that the claims “recit[e] a judicial exception in the
form of an abstract idea comprising a series of abstract data manipulation
and computational analysis steps. . . . All steps of the recited process
involve manipulations of the mass spectral data.” (Ans. 2—3.)
FF 3. The Examiner finds that “the instant claims do not require any
physical step or cause any physical change to occur. Rather, the claimed
method acts on data, per se.” (Id. at 3.)
4 Darland et al., Superior Molecular Formula Generation from Accurate-
Mass Data, Agilent Technologies Technical Overview, 1—12 (2008)
(“Darland”).
5 Hill et al., Automated assignment of high-resolution collisionally activated
dissociation mass spectra using a systematic bond disconnection approach,
Rapid Commun. Mass Spectrum. 19, 3111—18 (2005) (“Hill”).
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Application 12/938,953
FF 4. The Examiner finds that
Performing mass spectroscopy on [a] sample is not new or
improved; rather it encompasses routine and conventional
procedures that are old and well known in this field. Further,
identifying peaks in a mass spectrum and associating them to
components of a compound of interest is also not new, but again
embraces what is routine and conventional in this field of mass
spectral analysis of observed features of mass spectra.
(Ans. 3—4.)
FF 5. The Examiner finds that “the recited claims do not present anything
significantly more than [the] abstract idea . . . The additional] elements
recited in the claims do not represent any significant improvement, rather
[they] encompass[] only the routine and conventional procedures already
known to the art.” (Ans. 4.)
DISCUSSION
Rejection No. 1
Issue
Whether a preponderance of the evidence of record supports the
Examiner’s rejection of claim 1 under 35 U.S.C. § 101.
Analysis
The Examiner finds that claim 1 recites an abstract idea comprising
data manipulation and computational analysis steps without presenting
anything significantly more than the abstract idea. (FF 2—5.) Appellants
argue that the claimed method “results in the transformation of
experimentally derived mass spectrum data into a practically applied curated
mass spectrum for a particular purpose.” (Appeal Br. 7; see also Reply Br.
2-A.)
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Application 12/938,953
In analyzing patent eligibility questions under 35 U.S.C. § 101, the
Supreme Court instructs us to “first determine whether the claims at issue
are directed to a patent-ineligible concept.” Alice Corp. Pty Ltd. v. CIS
Bank Int’l, 134 S. Ct. 2347, 2355 (2014). If this threshold is met, we move
to a second step of the inquiry and “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1297 (2012)).
Step 1
We agree with the Examiner that claim 1 is directed to a patent-
ineligible concept; namely, an abstract idea. Abstract ideas include data
analysis and algorithms. See, e.g., Alice 134 S. Ct. at 2355; Bilski v. Kappos,
561 U.S. 593, 611 (2010); Parker v. Flook, 437 U.S. 584, 59A-95 (1978);
and Gottschalkv. Benson, 409 U.S. 63, 71—72 (1972). Our reviewing court
has also made clear that abstract ideas include collecting information and
analyzing that information “by steps people go through in their minds, or by
mathematical algorithms.” FairWarningIP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1093—94 (Fed. Cir. 2016) (internal citation omitted). Moreover,
taking some action in response to the collected and analyzed information,
without more, is also “abstract as an ancillary part of such collection and
analysis.” Id. (claims directed to collecting and analyzing information to
detect misuse of protected health information and “notifying a user when
misuse is detected.”) Put concisely, “[w]ithout additional limitations, a
process that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible.”
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Digitech Image Techs., LLCv. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014).6
Here, claim 1 is directed to collecting and analyzing mass spectrum
data (“obtaining” and “identifying” steps (a) and (b)), and taking action in
response to the collection and analysis (“removing” and “replacing” steps (c)
and (d)). See FairWarning, 839 F.3d at 1093—94. Moreover, claim 1 is
directed to “manipulations that are commonly associated with mental
operations.” (FF 1.)
Step 2
In considering the second step of the Alice inquiry, we agree with the
Examiner that nothing in claim 1 adds “significantly more than [the] abstract
idea.” (FF 5.) While Appellants argue that claim 1 is directed to the
transformation of mass spectrum data under the machine-or-transformation
test (Appeal Br. 5—6), our reviewing court has held that “[t]he mere
manipulation or reorganization of data . . . does not satisfy the
transformation prong” of the machine-or-transformation test. Cybersource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011).
Moreover, “[t]he claim limitations, analyzed alone and in combination, fail
to add ‘something more’ to ‘transform’ the claimed abstract idea of
collecting and analyzing information . . . into ‘a patent-eligible application.’”
FairWarning, 839 F.3d at 1095 (quoting Alice, 134 S.Ct. at 2354, 2357).
6 See also Intellectual Ventures v. Capital One, 2017 WL 900031,*5 (Fed.
Cir. March 7, 2017), discussing cases in which claims reciting data
manipulation steps were held to be patent ineligible as abstract ideas.
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Application 12/938,953
Conclusion
A preponderance of the evidence of record supports the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101. Claims 2—9 and 20—22 were not
argued separately and fall with claim 1.
Rejection No. 2
Issue
Whether a preponderance of the evidence of record supports the
Examiner’s finding of anticipation under 35 U.S.C. § 102(b).
Analysis
Appellants contest the anticipation rejection by arguing that Olsen
“fails to describe a step of removing from the mass spectrum all peaks that
do not correspond to the compound of interest to produce an uncurated mass
spectrum for the compound of interest.” (Appeal Br. 8.) In particular,
Appellants take issue with the Examiner’s position that this step is disclosed
in Olsen because “the BSA peptide of interest was isolated for further
fragmentation as per Fig. 2, and therefore any ions, and therefore peaks, not
corresponding to this compound were discarded.” {Id., citing Final Act. 5.)
According to Appellants, this isolation process “does not result in removal
from the spectrum of all peaks that do not correspond to the compound of
interest,” such as peaks resulting from electronic noise. (Appeal Br. 9.)
Appellants also argue that the term “mass spectrum” refers to data and not a
sample that will be analyzed by mass spectrometry. {Id. at 10.)
We are persuaded by Appellants’ arguments. Anticipation requires
that a prior art reference disclose every limitation of the claimed invention,
either explicitly or inherently. In re Schreiber, 128 F.3d 1473, 1477 (Fed.
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Application 12/938,953
Cir. 1997). In this case, the Examiner has not persuasively established that
the claimed “removing” step at issue is disclosed by Olsen.
Conclusion
A preponderance of the evidence of record fails to support the
Examiner’s finding that claims 1—3 are anticipated under 35 U.S.C. § 102(b).
Rejection Nos. 3 and 4
Issue
Whether a preponderance of the evidence of record supports the
Examiner’s conclusions of obviousness under 35 U.S.C. § 103(a).
Analysis
Appellants contest the obviousness rejections with the same argument
set forth above; namely, the failure of Olsen to describe the step of
“removing from the mass spectrum all peaks that do not correspond to the
compound of interest to produce an uncurated mass spectrum for the
compound of interest.” (Appeal Br. 11—12.)
We are again persuaded by Appellants’ arguments. A prima facie
case for obviousness “requires a suggestion of all limitations in a claim.”
CFMT, Inc. v. Yieldup Inti Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003). In
this case, the Examiner has not persuasively established that the claimed
“removing” step at issue is suggested by Olsen, and that deficiency is not
cured by Darland or Hill.
Conclusions
A preponderance of the evidence of record fails to support the
Examiner’s rejections under 35 U.S.C. § 103(a) of claims 1—5 and 20—22
pursuant to Rejection No. 3, and claims 1—3, 6—9, and 20-22 pursuant to
Rejection No. 4.
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Application 12/938,953
SUMMARY
We affirm the rejection of claims 1—9 and 20—22 under 35 U.S.C.
§101.
We reverse the rejection of claims 1—3 under 35 U.S.C. § 102(b).
We reverse the rejections under 35 U.S.C. § 103(a) of claims 1—5 and
20-22 (Rejection No. 3) and claims 1—3, 6—9, and 20-22 (Rejection No. 4).
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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