Ex Parte Morimoto

Patent Trial and Appeal Board

Mar 14, 2017

13656505 (P.T.A.B. Mar. 14, 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.
13/656,505 10/19/2012 Kentaro MORIMOTO SMZ-061/7315202001 6657
23517 7590 03/16/2017
MORGAN, LEWIS & BOCKIUS LLP (BO)
1111 PENNSYLVANIA AVENUE, N.W.
WASHINGTON, DC 20004
EXAMINER
NEGIN, RUSSELL SCOTT
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
03/16/2017 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):
kcatalano@morganlewis.com
patents @ morganlewis.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENTARO MORIMOTO
Appeal 2016-003970
Application 13/656,5051
Technology Center 1600
Before DONALD E. ADAMS, DEMETRA J. MILLS, and
ULRIKH W. JENKS, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims 1—3, 6—8, 11—
13, and 16—18 (App. Br. 4). Examiner entered a rejection under 35 U.S.C.
§ 101. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Appellant discloses “a method and system for processing and
analyzing mass spectrometry data obtained by an MSn analysis on a peptide
or similar high-molecular compound originating from a living organism, to
1 Appellant identifies the real party in interest as “Shimadzu Corporation”
(App. Br. 2).
Appeal 2016-003970
Application 13/656,505
identify the high-molecular compound or analyze its structure” (Spec. 11).
Claim 1 is representative and reproduced below:
1. A mass spectrometry data analyzing method for identifying
a protein in a test sample containing fragments of the protein,
using data collected by performing a mass spectrometry of the
test sample, comprising:
a spectrum generating step, in which an MSn analysis on
the test sample, where n is an integer equal to or greater than
three, is performed to generate an MSn spectrum by a mass
spectrometer unit coupled to a controlling and processing unit;
a partial amino acid sequence deducing step, in which de
novo sequencing on the MSn spectrum is performed to
determine a partial amino acid sequence;
a tag generating step, in which a sequence tag is
generated by using the mass-to-charge ratio of a precursor ion
of the MS2 analysis, the mass-to-charge ratio of a precursor ion
of the MSn analysis, and the partial amino acid sequence
determined in the partial amino acid sequence deducing step;
and
a database searching step, in which a database of amino
acid sequence information of proteins is searched for a protein
that matches information represented by the sequence tag,
wherein the precursor ion of the MSn spectrum to be used
for the de novo sequencing in the partial amino acid sequence
deducing step has a mass-to-charge ratio corresponding to an
amino acid sequence consisting of four or less residues or has a
mass-to-charge ratio of 500 Da or less.
(App. Br. 16.)
The claims stand rejected as follows:
Claims 1—3, 6—8, 11—13, and 16—18 stand rejected under 35 U.S.C.
§ 101, as directed to non-statutory subject matter.
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Application 13/656,505
ISSUE
Does the evidence of record support Examiner’s finding that
Appellant’s claimed invention is directed to non-statutory subject matter?
FACTUAL FINDINGS (FF)
FF 1. Examiner finds that Appellant’s claimed invention is “directed to the
abstract idea of obtaining data from a mass spectrometer and
computationally analyzing the data” (Final Act.2 3; see Ans. 2—3; Ans. 3
(Appellant’s “claim[ed] [invention], as a whole, is directed to an abstract
idea”)).
FF 2. Examiner finds that Appellant’s claims do “not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the claims are drawn to the abstract idea of manipulating
multidimensional mass spectral data” (Final Act. 3; see id. at 4 (“simply
analyzing data produced by a mass spectrometer does not cause the claims to
contribute significantly more to the abstract idea”); Ans. 3 (“taking data
output from a mass spectrometer to generate a spectrum is mathematical
manipulation and an abstract idea”)).
FF 3. Examiner finds that “even though [Appellant’s] claims recite a mass
spectrometer, the claims are executable without a mass spectrometer. In
other words, as long as one of skill in the art has the data output from the
mass spectrometer, it is possible to execute the algorithms recited in
[Appellant’s] claims” (Ans. 4).
FF 4. Examiner finds that a “mass spectrometer is not significantly more
than the abstract idea because mass spectrometers are routine and
conventional in the prior art” (id.).
2 Examiner’s January 23, 2015 Final Office Action.
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Application 13/656,505
ANALYSIS
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. CLS
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)).
Taking up the first step of the patent-eligibility analysis, claim 1 is
reasonably directed to an abstract idea because it relates to the mathematical
analysis of data; however, we note, “[a]t some level, ‘all inventions . . .
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas,”’ and whether one takes a macroscopic or microscopic
view of a claim may be determinative on the issue. Alice, 134 S. Ct. at 2354
(quoting Mayo, 132 S. Ct. at 1293); and see Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1299-1300 (Fed. Cir. 2016).
On this record, Examiner finds that computationally analyzing the
data obtained from a mass spectrometer represents an abstract idea (see FF
1—3). We agree. Data analysis and algorithms are abstract ideas. 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, 594—95 (1978); and Gottschalk v. Benson, 409 U.S.
63, 71—72 (1972). Put concisely, “[wjithout additional limitations, a process
that employs mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible.” Digitech Image
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Application 13/656,505
Techs., LLCv. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir.
2014).
Turning to the second step under Alice, the facts and claimed subject
matter here are analogous to those of the recent Federal Circuit decision in
Amdocs, 841 F.3d 1288, which leads us to determine that the claims recite
the “something more” required by the Supreme Court to transform an
abstract idea into a patent-eligible invention. See also Alice, 134 S. Ct. at
2355 (citing Mayo, 132 S. Ct at 1303). Here, as in Amdocs, while
Appellant’s claimed invention may require, in part, the abstract concept of
analyzing data using mathematical algorithms, Appellant’s claimed
invention also entails steps that include, inter alia, the generation of a
spectrum requiring an MSn analysis of a test sample, where n is an integer
equal to or greater than three, is performed to generate an MSn spectrum by a
mass spectrometer unit coupled to a controlling and processing unit; a partial
amino acid sequence deducing step in which de novo sequencing on the MSn
spectrum is performed to determine a partial amino acid sequence; and that
the precursor ion of the MSn spectrum to be used for the de novo sequencing
in the partial amino acid sequence deducing step has a mass-to-charge ratio
corresponding to an amino acid sequence consisting of four or less residues
or has a mass-to-charge ratio of 500 Da or less (see App. Br. 16 (Appellant’s
claim 1); see generally id. at 16—21)). See Amdocs, 841 F.3d at 1033—01.
While Examiner finds that “mass spectrometers are routine and conventional
in the prior art,” Examiner failed to establish an evidentiary basis on this
record to support a finding that Appellant’s specific use of a mass
spectrometer is routine and conventional in the art.
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Application 13/656,505
Further, as in Amdocs, Appellant’s claimed invention ties the
invention to a structure — a mass-spectrometer (see App. Br. 16—21). See
also Amdocs, 841 F.3d at 1300-01. Here, as in Amdocs, Examiner failed to
establish that Appellant’s claimed invention preempts the generic
enhancement of data associated with a generic data output from a mass-
spectrometer, as opposed to a specific technological solution needed in
protein analysis using mass-spectroscopy (see App. Br. 16—21). See also
Amdocs, 841 F.3d at at 1300-02. Considered as an ordered combination,
Examiner failed to establish an evidentiary basis on this record to support a
finding that Appellant’s claimed invention recites an invention that is merely
the “well-understood, routine, and conventional activity] previously known
to the industry.” Amdocs, 841 F.3d at 1301.
CONCLUSION OF LAW
The evidence of record supports Examiner’s finding that Appellant’s
claimed invention is directed to non-statutory subject matter.
The rejection of claims 1—3, 6—8, 11—13, and 16—18 under 35 U.S.C.
§ 101, as directed to non-statutory subject matter is reversed.
REVERSED
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