Ex Parte Lai

Patent Trial and Appeal Board

Apr 25, 2018

13704007 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/704,007 12/13/2012 Ching Ming Lai
23266 7590 04/27/2018
DRIGGS, HOGG, DAUGHERTY & DEL ZOPPO CO., LP.A.
38500 CHARDON ROAD
DEPT. DLBH
WILLOUGBY HILLS, OH 44094
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.
ANA1073-US_ANA106971 5660
EXAMINER
VANNI, GEORGE STEVEN
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
04/27/2018 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):
usptocommunications@driggslaw.com
carole@driggslaw.com
mwheeler@driggslaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHING MING LAI 1
Appeal2017-003941
Application 13/704,007
Technology Center 1600
Before ULRIKE W. JENKS, JOHN G. NEW, and DAVID COTTA,
Administrative Patent Judges.
NEW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellant identifies Analogic Corporation, of Peabody, MA as the real
party-in-interest. App. Br. 2.
Appeal2017-003941
Application 13/704,007
SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1, 3-13, 15, 16, and 23-28 under
35 U.S.C. § 101 as being directed to nonstatutory subject matter. 2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellant's claimed invention is directed to a method for verifying an
Internal Lane ("ILS") Standard signal for DNA processing includes
obtaining the ILS signal, determining acquisition times between peaks of the
ILS signal, obtaining acquisition times between peaks in reference ILS
information for the ILS signal, and verifying the ILS signal based on the ILS
acquisition times and the reference ILS acquisitions times. Abstract.
REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:
1. A method for verifying an Internal Lane Standard (ILS)
signal for DNA processing, comprising:
generating, with an optical reader of a sample processing
apparatus, an output indicative of light sensed by the optical
reader where the light is emitted by dyes in dye labeled and
separated fragments of a sample in response to the optical reader
2 Claims 1, 3-13, 15, 16, and 23-28 were also rejected as unpatentable under
35 U.S.C. § 103(a) as being obvious over the combined cited prior art, and
under the judicially-created doctrine of obviousness-type double patenting.
See Final Act. 6, 11. The Examiner has withdrawn these rejections. Ans.
2.
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Application 13/704,007
directing a light beam of a predetermined wavelength range at
the dye labeled and separated fragments;
identifying, with a processor of the sample processing
apparatus, a signal of the output that includes the ILS signal,
wherein the ILS signal has a first number of peaks and the first
number of peaks are unequally spaced with respect to each other;
determining, with the processor, acquisition times
between peaks of the ILS signal;
obtaining, with the processor, acquisition times between
peaks in reference ILS information for the ILS signal, wherein
the reference ILS information has a second number of peaks and
the second number of peaks are unequally spaced with respect to
each other, the second number of peaks is the same as the first
number of peaks, and a spacing of the peaks in the ILS signal is
different than a spacing in the reference ILS information;
determining, with the processor, ratios of the ILS signal
acquisition times to the reference ILS information acquisition
times; and
verifying, with the processor, that the ILS signal includes
only true peaks based on the ratios.
App. Br. 13.
ISSUE AND ANALYSIS
We agree with, and adopt, the Examiner's findings and conclusion
that the appealed claims are directed to nonstatutory subject matter and are
consequently unpatentable. We address the arguments raised by Appellant
below.
Issue
Appellant argues that the Examiner erred because the claims do not
preempt a judicially-created exception to the statute and because the
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Application 13/704,007
limitations of the claim add "significantly more" than just the exception
itself. App. Br. 5---6.
Analysis
The Examiner finds independent claim 1 is directed to the abstract
idea of verifying that internal lane standard ("ILS") data includes only true
peaks. Final Act. 3--4. The Examiner finds that each of the steps recited in
the claim involves only the manipulation of data, which is an abstract idea.
Id. at 4.
The Examiner further finds that any additional steps recited in claim 1
amount to no more than conventional data gathering steps. Final Act. 4.
The Examiner finds that it is not clear from the record that the claim as a
whole is an improvement over embodiments available in the art at the time
of the instant invention. Id. The Examiner therefore concludes that, viewed
as a whole and considering all of the limitations within claim 1, both
individually and in combination, the limitations do not transform the claim
into a patent-eligible application of the judicial exception such that the claim
amounts to significantly more than the judicial exception itself. Id. at 4--5.
Appellant first argues that claim 1, when viewed as a whole, does not
seek to "tie up" a judicial exception. App. Br. 5 ( citing 2014 Interim
Guidance on Patent Subject Matter Eligibility, 79(241) Fed. Reg. 74618,
74625 (Dec. 16, 2014) (the "Guidance"). Appellant asserts that the
limitations of claim 1 do not attempt to preempt the general acts of
identifying, determining, obtaining and/or verifying, let alone verifying an
Internal Lane Standard (ILS) signal for DNA processing. Id. at 6. Appellant
contends that there exist other approaches to verifying that the ILS signal,
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Application 13/704,007
for instance, including only true peaks, and that these do not require
determining and using the claimed ratios. Id. Appellant notes, by way of
example, that the art of record teaches techniques for verifying an ILS
signal. Id. However, Appellant argues, none of these techniques disclose or
suggest determining ratios as claimed and using those ratios to verify an ILS
signal, as recited in claim 1. Id.
Appellant points to the Guidance, which, Appellant contends, states
that claims that do not preempt an exception to Section 101 do not need to
proceed through the second step of the Alice/Mayo analysis as their
eligibility is self-evident. App. Br. 6 (citing Guidance 74625).
Appellant next argues that the limitations of claim 1 are sufficient to
ensure that the limitations of claim 1, when considered as an ordered
combination, amount to significantly more than the abstract idea because
they solve a DNA sequencing system-centric problem with a claimed
solution that is necessarily rooted in the technology. App. Br. 6-7.
Specifically, Appellant asserts, the claim addresses the problem of
translating the acquisition times of the DNA fragments into fragment sizes,
which may include false peaks and/or missing peaks, and which in tum may
lead to erroneous translation and sequencing with the DNA sequencing. Id.
at 7. According to Appellant, this includes determining ratios of the ILS
signal acquisition times to the reference ILS information acquisition times
and verifying that the ILS signal includes only true peaks based on the
ratios. Id. Furthermore, Appellant argues, these limitations add specific
limitations other than what is well-understood, routine, and conventional in
the field of DNA sequencing and comprise unconventional steps that confine
the claims to a particular useful application. Id.
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Application 13/704,007
We are not persuaded by Appellant's arguments. With respect to
Appellant's first argument - that, because Appellant's claims do not preempt
a judicially-created exception to Section 101, the claims are consequently
patent-eligible - we point out that such an analysis is not a part of the two-
part test set forth by the Supreme Court in Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66 (2012) and Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S.Ct. 2347 (2014). Admittedly, the Supreme Court has made
clear that the principle of preemption is the basis for the judicial exceptions
to patentability. See, e.g., Alice, 134 S.Ct. at 2354. However, although
preemption may signal patent-ineligible subject matter, the absence of
complete preemption does not necessarily demonstrate patent eligibility.
See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015). Thus, even ifwe accept, arguendo, Appellant's argument that
the claims on appeal do not preempt one of the judicially-created exceptions
to Section 101, that in itself is not sufficient to demonstrate that the claims
are patent-eligible. Indeed, "where a patent's claims are deemed only to
disclose patent-ineligible subject matter under the Alice/Mayo framework,
preemption concerns are fully addressed and made moot." Id.
Nor are we persuaded by Appellant's reliance upon the Guidance.
Section I.B.3 of the Guidance states, in relevant part:
For purposes of efficiency in examination, a streamlined
eligibility analysis can be used for a claim that may or may not
recite a judicial exception but, when viewed as a whole, clearly
does not seek to tie up any judicial exception such that others
cannot practice it. Such claims do not need to proceed through
the full analysis herein as their eligibility will be self-evident.
However, if there is doubt as to whether the applicant is
effectively seeking coverage for a judicial exception itself, the full
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Application 13/704,007
analysis should be conducted to determine whether the claim
recites significantly more than the judicial exception.
(Emphasis added).
The Guidelines thus state that, in cases in which, as here, Appellant is
seeking coverage for a judicial exception ( see our analysis infra) it is
required that we proceed to the full, two-part analysis.
With respect to Appellant's second argument, that the claims add
"significantly more" than just the judicial exception itself, we are similarly
not persuaded. Appellant's claim 1 is directed to a method of: ( 1) generating
an output of an optical reader of dye-labeled and separated fragments at a
specific wavelength, and then identifying, with a processor of the sample
processing apparatus, a signal of the output that includes the ILS signal and
determining the acquisition times between peaks of the ILS signal. The rest
of claim 1 is directed to: (2) comparing the acquisition times between peaks
in reference ILS information for the ILS signal with those of the acquired
signal.
Appellant does not argue that the acquisition of the test signal via the
optical reader/processor is a novel step or one otherwise unknown to the art
at the time of Appellant's invention. See Spec. 1-2. Rather, the invention
centers upon the method of comparing the acquisition times of the sample
with those of selected reference values i.e.,
[O]btaining, with the processor, acquisition times between
peaks in reference ILS information for the ILS signal, wherein
the reference ILS information has a second number of peaks and
the second number of peaks are unequally spaced with respect to
each other, the second number of peaks is the same as the first
number of peaks, and a spacing of the peaks in the ILS signal is
different than a spacing in the reference ILS information;
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Application 13/704,007
determining, with the processor, ratios of the !LS signal
acquisition times to the reference !LS information acquisition
times; and
verifying, with the processor, that the ILS signal includes
only true peaks based on the ratios.
(Emphasis added). Although the claim thus generally falls into what would
be a patent-eligible category, i.e., a method (a "process"), we agree with the
Examiner that the claim is directed, at least in part, to one of the judicially-
created exceptions to Section 101, viz., an abstract intellectual concept or
mental process. See Gottschalkv. Benson, 409 U.S. 63, 67 (1972) holding
that: "[p ]henomena of nature, ... mental processes, and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work") (emphasis added). Following the Supreme Court's
holding in Benson, our reviewing court has consistently: "refused to find
processes patentable when they merely claimed a mental process standing
alone and untied to another category of statutory subject matter[,] even when
a practical application was claimed." In re Comiskey, 554 F.3d 967, 980
(Fed. Cir. 2009).
Appellant adduces no evidence that these steps recited in claim 1
could not be performed by an individual mentally, or with the aid of only a
paper and pencil and are consequently "mental processes" and an exception
to Section 101. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372 (Fed. Cir. 2011). We agree with the Examiner's conclusion that
the "determining" and "verifying" steps therefore recite abstract mental
processes that fall within the proscribed exceptions to Section 101.
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Application 13/704,007
Having determined that the claims are directed to a judicially-created
exception, the Supreme Court's analytical model set forth in Mayo next
requires us to determine whether the remaining limitations of the claim
amount to "significantly more than a patent upon the [ineligible concept]
itself." Ariosa, 788 F.3d at 1375 (quoting Mayo, 566 U.S. at 73); see also
Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344,
13 51 (Fed. Cir. 2014) ("Without additional limitations, a process that
employs mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible").
We conclude that they do not. The remaining limitations are directed
to gathering and identifying electrophoretic data via means well known in
the contemporary art and selecting various reference data for purposes of
comparison. Appellant does not argue, or adduce any supporting evidence
to suggest that, the "optical reader" and the "processor" were not well
known in the art. Indeed, Appellant's Specification discloses that: "[T]he
methods herein can be implemented via one or more processor of one or
more computing systems executing one or more computer readable and/or
executable instructions stored on computer storage medium such as memory
local to or remote from the one or more computing systems," suggesting that
the claimed processor could be a generic computer running software that
would have been known to a person of ordinary skill. See Spec. 17. As such
the remaining limitations of claim 1 are directed to no more than the routine
collection of data by well-known methods, and the selection of appropriate
reference data for comparison, the latter step being another abstract idea
capable of being performed mentally. See CyberSource, 654 F.3d at 1370
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(Fed. Cir. 2011) ("The mere collection and organization of data ... is
insufficient to meet the transformation prong of the test").
We consequently agree with the Examiner that the additional
limitations of claim 1 do not add "significantly more" than claiming the
judicially-created exception itself. Accordingly, we affirm the Examiner's
rejection of claim 1.
DECISION
The Examiner's rejection of claims 1, 3-13, 15, 16, and 23-28 as
unpatentable 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 ). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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