Ex Parte Perlin

Patent Trials and Appeals Board

Nov 6, 2018

12584761 - (D) (P.T.A.B. Nov. 6, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/584,761
7590
Ansel M. Schwartz
Attorney at Law
Suite 304
201 N. Craig Street
Pittsburgh, PA 15213
09/12/2009
11/07/2018
FIRST NAMED INVENTOR
Mark W. Perlin
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.
PERLIN-8 CONT II 8584
EXAMINER
BRUSCA, JOHNS
ART UNIT PAPER NUMBER
1631
MAIL DATE DELIVERY MODE
11/07/2018 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 MARK W. PERLIN 1
Appeal2017-000982
Application 12/584,761
Technology Center 1600
Before RICHARD M. LEBOVITZ, ROBERT A. POLLOCK, and
RICHARD J. SMITH, 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
for analyzing a nucleic acid sample. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
STATEMENT OF THE CASE
Claims on Appeal
Claims 2---6 and 27-31 are on appeal. (Claims Appendix, Br. 42--44.)
Claims 30 and 2 are illustrative and read as follows:
1 According to Appellant, the real party in interest is Cybergenetic Holdings,
Inc. (Br. 2.)
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Application 12/584,761
30. A method for analyzing a nucleic acid sample comprised
of the steps:
(a) forming labeled DNA sample fragments from a nucleic
acid sample;
(b) size separating said sample fragments with size
standard fragments, and detecting the fragments to form a sample
signal and a size standard signal;
( c) transforming the sample signal into size coordinates
using the size standard signal;
( d) analyzing the nucleic acid sample in size coordinates
to form data; and
( e) using a computer to apply at least ten different rules to
check the data for possible artifacts, where the rules compare a
numerical quality score with a predetermined threshold value to
make a binary decision, and at least one of the rules compares
observed measures of the data against expected data behavior.
(Appeal Br. 44.)
2. A method for analyzing a nucleic acid sample comprised
of the steps:
(a) forming labeled DNA sample fragments from a nucleic acid
sample;
(b) size separating and detecting said sample fragments to form
a sample signal;
( c) forming labeled DNA ladder fragments corresponding to
molecular lengths;
( d) size separating and detecting said ladder fragments to form a
ladder signal;
( e) transforming the sample signal into an allelic ladder size
coordinate system using the ladder signal, where the transformed
lengths of the DNA sample fragments are expressed using
integer values that accurately specify the base pair lengths of
DNA sample fragment molecules; and
(f) analyzing the nucleic acid sample signal in length coordinates.
(Id. at 42.)
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Examiner's Rejection
Claims 2---6 and 27-31 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Butler, 2 Oldroyd, 3 Hiller, 4 Stoughton, 5 and Lazaruk. 6
(Final Act. 7 3-9; Ans. 2-8.)
FINDINGS OF FACT
The following findings are provided for emphasis and reference
purposes. Additional findings may be found in this Decision, the Final
Action, the Advisory Action dated Sept. 28, 2015 ("Adv. Act."), and in the
Examiner's Answer.
FF 1. Butler teaches the use of capillary electrophoresis (CE) and labeled
internal standards for precise sizing of PCR products. (Butler Title, 974.)
Butler teaches that PCR may be used in forensic identification. (Butler 974.)
FF 2. Butler teaches the generation of an allelic ladder, that data was
captured using a computer, and that the method may be used to identify
short tandem repeats (STR) alleles of humans. (Butler 975-76.)
2 J.M. Butler et al., Application of dual internal standards for precise sizing
of polymerase chain reaction products using capillary electrophoresis,
Electrophoresis 16, 974--80 (1995) ("Butler").
3 N.J. Oldroyd, A highly discriminating octoplex short tandem repeat
polymerase chain reaction system suitable for human individual
identification, Electrophoresis 16, 334--37 (1995) ("Oldroyd").
4 Hiller et al., US 6,274,317 B 1, issued Aug. 14, 2001 ("Hiller").
5 R. Stoughton et al., Data-adaptive algorithms for calling alleles in repeat
polymorphisms, Electrophoresis 18, 1-5 (1997) ("Stoughton").
6 K. Lazaruk, Genotyping of forensic short tandem repeat (STR) systems
based on sizing precision in a capillary electrophoresis instrument,
Electrophoresis 19, 86-93 (1998) ("Lazaruk").
7 Final Office Action dated June 17, 2015 ("Final Act.").
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FF 3. Oldroyd teaches that STR loci may exhibit a high degree of length
polymorphism, and that STRs provide highly informative loci for use in
human individual identification (e.g. DNA profiling based on STR analysis).
(Oldroyd 334.)
FF 4. Oldroyd teaches the use of labeled amplified fragments and analysis
of the sizes of PCR fragments by electrophoresis, wherein fragment sizes
were determined automatically by use of a computer. (Oldroyd 335, Figure
1.)
FF 5. Oldroyd teaches that "[t]hrough the inclusion of an internal sizing
standard with every sample, alleles differing in size by increments of 2 bp
were accurately sized and computer-generated band sizes demonstrated to
fall into discrete windows allowing unambiguous allele designation in most
cases." (Oldroyd 336.) Oldroyd further teaches that automatic allele
designation was done by a computer. (Id.)
FF 6. The Examiner finds that Oldroyd "consistently uses integer values of
base pair sizes determined by the described procedure." (Ans. 4, citing
Oldroyd Figures 1-3 and the discussion of determined sizes of fragments by
increments of 2 bp at 336.)
FF 7. The Examiner finds that Hiller teaches "a process and apparatus
comprising a programmed computer for assessing alleles from nucleic acids
resolved by electrophoresis." (Ans. 5, citing Hiller cols. 3--4 and Figure 1.)
FF 8. Hiller teaches "[f]or each trace, a size standard is used to transform
the time domain signal F(t) into a space domain signal f(s) wheres is length
expressed in base pairs." (Hiller col. 4, 11. 6-8.) Hiller further teaches that
the "trace data are read by an auto allele calling system [] executing an auto
allele caller process []. Called (i.e., identified) alleles that result from
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execution of the auto allele caller process [] are stored in the database." (Id.
at col. 4, 11. 8-12.) Hiller further teaches automated peak analysis (Figures
2, 3A, 3B, 4A, 4B, and 4C), including correction for split-peak errors,
bleedthrough, and spillover. (Id. at col. 3, 11. 4--15.) Figure 9 of Hiller
teaches genotype analysis.
FF 9. Hiller teaches the use of heuristic rules, including for quality
assessment of the data, and for artifacts such as stutter peaks and
bleedthrough. (Hiller cols. 9-10.) Hiller teaches that thresholds are used for
the heuristic rules, such as (for example), to filter adjacent peaks and height
difference filters. (Id.)
FF 10. Hiller teaches that:
After all possible genotypes for the trace have been
examined, a set of heuristic rules are applied to the set of calls to
screen out obviously bad allele calls. The heuristic rules exclude
bad calls or determine whether the trace should be labeled
"uncallable" due to a high degree of uncertainty.
According to the present invention, a method executed in
a computer system for identifying alleles from a trace includes
applying a typical shape of an allele for a marker to the trace to
identify potential allele calls that match to the typical shape of
the allele at the marker and assigning a quality factor to the allele
calls.
(Hiller col. 2, 11. 19-30.)
FF 11. Stoughton teaches data-adaptive algorithms for separating
overlapping signatures of heterozygotic allele pairs in electrophoresis data.
(Stoughton Abstract.) Stoughton further teaches that the "algorithms allow
overlapping alleles to be called correctly in almost every case where a
trained observer could do so, and provide a fast automated objective
alternative to human reading of the gels." (Id. (emphasis added).)
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FF 12. Stoughton teaches "using the largest peaks in the actual data to
define integer base-pair values." (Stoughton 2.) Stoughton teaches the use
of algorithm rules to analyze data. (Id. at 3, Table 1.)
FF 13. Lazaruk teaches that automated fluorescence analysis of PCR-
amplified short tandem repeat (STR) loci "is becoming an established tool
both in forensic casework and in the implementation of both state and
national convicted offender DNA databases." (Lazaruk Abstract.)
FF 14. Lazaruk teaches that electrophoresis data are "analyzed by software
which automatically determines allele sizes based on a standard curve for the
in-lane size standard," and further teaches the use of an allelic ladder to
determine the sizes of the fragments in a sample. (Lazaruk 86-87.)
FF 15. Lazaruk teaches use of an integer nucleotide scale and measurement
of peaks with software. (Lazaruk 90-92, Figures 2 and 3.) Lazaruk further
teaches "comparing samples from different sources, for example evidence
vs. reference samples, to determine whether the samples are consistent with
having originated from the same source." (Id. at 92.)
DISCUSSION
We adopt the Examiner's findings, analysis, and conclusions,
including with regard to the scope and content of, and motivation to
combine, the prior art, as set forth in the Adv. Act. 2 and Answer (Ans. 2-
12). 8 We discern no error in the rejection of the claims as obvious.
8 The Examiner indicates in the Answer that the rejection was modified to
point to locations in Butler, Oldroyd, Hiller, and Lazaruk "that show use of
computers to analyze DNA fragment sizes and DNA alleles." (Ans. 9.)
Appellant did not file a reply brief.
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We limit our consideration to claims 30, 31, 2, 29, 5, and 4 because
the remaining claims on appeal were not argued separately.
Issue
Whether a preponderance of evidence of record supports the
Examiner's rejection under 35 U.S.C. § 103(a).
Principles of Law
The test for obviousness is "what the combined teachings of the
references would have suggested to those of ordinary skill in the art" and not
"that the claimed invention must be expressly suggested in any one or all of
the references." In re Keller, 642 F.2d 413,425 (CCPA 1981) (citing cases).
An obviousness analysis "need not seek out precise teachings directed
to the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418
(2007).
Analysis
We find that the Examiner has established a prima facie case of
obviousness as to the claims on appeal (see Final Act. 3-9; Ans. 2-8), and
that Appellant has not persuasively identified any error by the Examiner or
otherwise persuasively rebutted the prima face case.
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Appellant's Arguments
Appellant advance several arguments in response to the Examiner's
rejection, and relies on three declarations of the named inventor, Mark W.
Perlin. 9
Secondary Considerations
Appellant advances arguments regarding alleged long-felt need,
commercial success, and copying.
Long-felt need
Appellant refers to Perlin Declaration A to argue that the invention of
claims 30 and 31 overcame the "older approach" that used "vast armies of
crime lab technicians." (Br. 10.) Perlin Declaration A states that the
TrueAllele® Databank addresses "a long-felt need for better production of
DNA information from DNA data" and a "long-felt societal need." (Ex. A
at 2--4.) However, "long-felt need is analyzed as of the date of an articulated
identified problem and evidence of efforts to solve that problem." Texas
Instruments, Inc. v. Int'! Trade Comm., 988 F.2d 1165, 1178 (Fed. Cir.
1993). Here, Appellant has provided conclusory statements but has not
pointed to evidence showing an articulated identified problem and efforts to
solve it. Moreover, given the art cited by the Examiner, we are not
persuaded that there existed a long-felt but unmet or unsolved need. See
ZUP, LLC v. Nash Mfg., Inc., 896 F.3d 1365, 1374--75 (Fed. Cir. 2018).
9 Declaration under 37 C.F.R. § 1.132 dated July 27, 2014 ("Perlin
Declaration A" or "Ex. A"), Declaration under 37 C.F.R. § 1.132 dated
May 18, 2015 (re: claims 30 and 31) ("Perlin Declaration B" or "Ex. B"),
and Declaration under 37 C.F.R. § 1.132 dated May 18, 2015 (re: claims 2
and 4) ("Perlin Declaration C" or "Ex. C").
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Commercial Success
Appellant argues commercial success ( claims 3 0 and 3 1) based on the
Perlin Declaration B (Br. 13-15; 27-28) and Perlin Declaration C (claims 2
and 4, Br. 32-33.) Appellant also refers to Perlin Declaration A as
indicating "significant sales." (Br. 13.)
Perlin Declaration B states that "[ c ]ustomers specifically have paid
millions of dollars for the claimed steps of [(e)] of Claim 30 so, for instance,
so that highly confident data are not reviewed by a human operator of claim
31." (Ex.Bat 2.) Perlin Declaration C states that "[c]ustomers specifically
have paid millions of dollars for the claimed steps of [ ( e) and ( f)] of Claim 2
so they can then, for instance, identify an individual by DNA profiling of
Claim 4." (Ex. Cat 2.) Perlin Declaration A states that "[t]he claimed
invention is packaged and marketed by Cybergenetics, Corp. [] as the
TrueAllele® Databank system," and that "TrueAllele Databank has
generated over four and a half million dollars to date in revenue for
Cybergenetics through commercial products and services." (Ex. A at 2.)
In the ex parte process of patent examination, the US PTO "must rely
upon the applicant to provide hard evidence of commercial success." In re
Huang, 100 F.3d 135, 139--40 (Fed. Cir. 1996). (noting that the USPTO
"lacks the means or resources to gather evidence which supports or refutes
the applicant's assertion that the sales constitute commercial success").
Appellants state, for example, that customers have paid millions of dollars
for certain claim steps, but "provide[ d] no indication of whether this
represents a substantial quantity in [the relevant] market." Id. at 140; In re
Applied Materials, 692 F.3d 1289, 1300 (Fed. Cir. 2012). ("An important
component of the commercial success inquiry ... is determining whether
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[Appellant] had a significant market share relative to all competing
[products] based on the merits of the claimed invention.") In addition,
Appellant's conclusory assertions regarding customer payment for specific
claim steps does not establish the required nexus between the sales and
claimed invention, such as might be achieved by "an affidavit from the
purchaser explaining that the product was purchased due to the claimed
features." Huang, 100 F.3d at 140.
Appellant also identifies twelve customers and states that customers
"benefited from using the claimed invention by realizing increased accuracy
and efficiency." (See Br. 13-14, quoting Ex.Bat 2.) But Appellant fails to
provide proof that sales to these customers "were a direct result of the
unique characteristics of the claimed invention-as opposed to other
economic and commercial factors unrelated to the quality of the patented
subject matter." Huang, 100 F.3d at 140.
Copying
Appellant argues that competing software systems copy the claimed
invention. (Spec. 13, 15, and 33; Ex. A at 4--5.) Appellant contends, for
example, that "[c]ompeting DNA reference sample analysis software copies
the invention by using [length coordinates of claims 2 and 5, step (f)] in this
way, implying all the preceding claim steps. The 'OSIRIS' software system
copies claim[s] 2 and 5 of the TrueAllele Databank invention." (Br. 33.)
Perlin Declaration A identifies three companies that allegedly copy claim 30
(previously claim 1) and one program of the NIH (OSIRIS) that allegedly
copies claims 30, 2, and 5. (Ex. A Appendix.)
"[C]opying requires evidence of efforts to replicate a specific product,
which may be demonstrated through internal company documents, direct
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evidence [such as using the TrueAllele product to create a replica], or access
to [the TrueAllele product] combined with substantial similarity to [the
TrueAllele product]." See Wyers v. Master Lock Co., 616 F.3d 1231, 1246
(Fed. Cir. 2010). Appellant's conclusory allegations are insufficient
"evidence of efforts [ of third parties] to replicate" the TrueAllele product.
Claims 30, 31, 2, 29, 5, and 4
Before discussing arguments specific to these individual claims, we
address several points that appear throughout the Brief. First, Appellant
generally argues the cited references separately. (See, e.g., Br. 16-24.)
However, one cannot show nonobviousness by attacking references
individually where the Examiner bases the rejection on a combination of
references. See Keller, 642 F.2d at 426. Second, Appellant argues that
Butler, Oldroyd, and Lazaruk fail to recognize the problem solved by
Appellant's claimed invention. (Br. 18, 19, 23, and 28.) However, "[i]n
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls,"
KSR, 550 U.S. at 419, and "[o]ne of ordinary skill in the art need not see the
identical problem addressed in a prior art reference to be motivated to apply
its teachings" Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc. 424
F.3d 1293, 1323 (Fed. Cir. 2005). Third, Appellant alleges Examiner
"hindsight" at several places in its Brief. (See Br. 15, 18, 20, 25, 34, 36, and
38.) Those arguments are unpersuasive because Appellant points to no
evidence that any of the Examiner's findings were beyond the level of
ordinary skill at the time of the invention or could have been taken only
from Appellant's Specification. See In re McLaughlin, 443 F.2d 1392, 1395
(CCP A 1971 ). Fourth, Appellant refers to the lack of "enablement" in
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connection with individual references or combinations thereof. (See Br. 17,
22, 24, and 34.) Even if a specific reference is nonenabled for a certain
embodiment, a reference may still qualify as prior art for the purpose of
determining obviousness. See Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d
1569, 1578 (Fed. Cir. 1991).
Claim 30
Appellant advances the argument ( or a variation thereof), in
connection with its separate argument of the references as applied to claim
30, that neither of the individual references "teach or suggest the
transforming step or the analyzing step to form the data, where the data is
not any data whatsoever but very specific data arising from the transforming
step and the analyzing step." (Br. 17, 20, 21, 22, and 23.) However, in
making that conclusory statement, Appellant does not point to any error by
the Examiner. The Examiner's Answer points out that Butler, Oldroyd,
Hiller, and Lazaruk "show steps of analysis of DNA fragments that include
the claimed transforming and analyzing steps of claim 30, as noted in the
rejection." (Ans. 10; see also Final Act. 4--9.) Moreover, the repeated
argument that the claimed computer is used on "specific" data (see, e.g., Br.
14, 15, 20, 21, 25, and 26) is not persuasive given the Examiner's finding
that Butler, Oldroyd, Hiller, and Lazaruk show use of computers to analyze
DNA fragment sizes and DNA alleles. (Ans. 9.)
Butler
Appellant argues that Butler does not use a computer, and teaches
away from using a computer, and is thus non-analogous art. (Br. 14--18 and
24--25.) The Examiner responds that "[t]he rejection has been modified to
point to locations in Butler ... that show use of computers to analyze DNA
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fragment sizes and DNA alleles," and that Butler "used automated reading
of capillary gel electrophoresis." (Ans. 9; Butler 976, Figure 1; FF 1 and 2.)
Butler thus does not teach away because it does not "criticize, discredit, or
otherwise discourage" the use of a computer. See In re Fulton, 391 F .3d
1195, 1201 (Fed. Cir. 2004). Butler is also analogous art, at least because it
"is from the same field of endeavor, regardless of the problem addressed."
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Oldroyd
Although acknowledging that Oldroyd uses a computer, Appellant
contends that "discerning the data" in Oldroyd does not involve a computer
or computer program. (Br. 19.) The Examiner responds by pointing out that
Hiller and Stoughton "show procedures for determining the quality of DNA
fragment data." (Ans. 9; FF 8, 11, and 12.) See Keller, 642 F.2d at 425.
Hiller
Appellant argues that Hiller teaches an automated allele caller and the
use of 8 rules, not 10. (Br. 20.) Appellant also argues that "[t]here is no
reason to add any further rules to the teachings of Hiller because Hiller does
not need further rules to perform its intended purpose." (Id.) Appellant also
contests the Examiner's statement that:
It would be further obvious to use at least 8 of the rules to analyze
data for artifacts shown in Hiller et al. because Hiller et al.
show 8 rules for detection of artifacts in data that are useful for
excluding inaccurate data. It would be further obvious to use the
at least 4 rules of Stoughton et al. in addition because
Stoughton et al. shows that the rules allow for determination of
artifacts of noise or poor choice of template.
(Br. 26, referring to Final Act. 8.)
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Appellant argues that "the data the rules are being applied to is not
any data, but very specific data," and that "this collection of rules from
different references that the Examiner is devising, fails to achieve the
necessary result of an operable and unique system that has received great
success in the marketplace." (Br. 26-27.)
We note that claim 30 does not specify the "at least ten different rules
to check the data for possible artifacts," other than that "the rules compare a
numerical quality score with a predetermined threshold value to make a
binary decision," and "at least one of the rules compares observed measures
of the data against expected data behavior." (Br. 44.) The binary decision
limitation is taught by Butler (see Ans. 4: "compar[ing] a numerical quality
score with a predetermined threshold value") and Hiller (see Ans. 7-8: "use
of thresholds in combination with rules to decide if data is good or
artifactual. ") The comparison of observed measures of data versus expected
data behavior is taught at least by Hiller. (FF 10.) The commercial success
argument is addressed above.
We are persuaded by the Examiner's rational for combining the rules
of Hiller with those of Stoughton. (Final Act. 8; Ans. 9-10.) The test for
obviousness does not require that additional rules be added to Hiller, but
what the combined teachings of Hiller and Stoughton would have suggested
to a person of ordinary skill in the art. See Keller, 642 F.2d at 425.
Stoughton and Lazaruk
Appellant separately argues that "there is no teaching or suggestion
why anyone skilled in the art would use the algorithm taught by [Stoughton
or Lazaruk] with any of the references cited by the Examiner in regard to the
applied art of record." (Br. 22 and 24.) We are not persuaded by this
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argument because, although claim 30 recites five process steps, it is not
limited to a particular algorithm.
Claim 31
Claim 31 depends from claim 30 and recites "wherein the rules are
used to focus data review so that highly confident data are not reviewed by a
human operator." (Br. 44.) Appellant separately argues that none of Butler,
Oldroyd, Hiller, Stoughton, or Lazaruk teach the limitation of claim 31,
particularly that "data are not reviewed by a human operator." (Br. 28-29.)
We are not persuaded, at least because Stoughton teaches an "alternative to
human reading of the gels." (FF 11.)
Appellant also contests the Examiner's combination of Hiller, Butler,
and Oldroyd (Final Act. 8) because Butler and Oldroyd identify peaks (not a
trace) and are not limited to alleles of the same marker, which is different
from the approach by Hiller which uses a trace and is only applicable to
alleles of the same marker. (Br. 29-30.) We are not persuaded because the
claimed subject matter is not limited to analyzing peaks or a trace, and those
references all relate to calling alleles. (See Ans. 11.)
Appellant also contests the Examiner's reliance on Hiller as teaching
or suggesting to obviate human review. (Br. 30-32.) However, we find no
error in the Examiner's finding that "the program of Hiller [] is designed to
inform the user when errors in the data are detected." (Final Act. 8; see also
Hiller Title: "Automated Allele Caller.") Thus, a person of skill in the art
would have understood Hiller as teaching "rules [] used to focus data review
so that highly confident data are not reviewed by a human operator." See
KSR, 550 U.S. at 421 ("A person of ordinary skill is also a person of
ordinary creativity, not an automaton.").
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Claim 2
Appellant argues that an allelic ladder size coordinate system is not
taught or suggested in the cited art, and particularly not by Lazaruk. (Br.
33-36.) However, the Examiner persuasively explains that the terms "allelic
ladder" and "allelic ladder size coordinate system" have no limiting
definitions in the Specification, and that Butler makes allelic ladders and
Lazaruk provides explicit guidance to use allelic ladders. (Ans. 12.) The
Examiner also points out that the references "show use of allelic size
standards which shows the limitation of an allelic ladder size coordinate
system." (Id.; FF 14.)
Appellant contests the Examiner's statement that it would have been
"obvious to determine integer base pair values of fragments because
Oldroyd[], Hiller[], and Stoughton[] use integer values of fragment lengths
determined by their analyses." (Br. 36, referring to Final Act. 7-8.) In
particular, Appellant argues that "[t]here is no basis for this conclusion of
obviousness to go from generally using integer values to the specific
limitation and requirement of using integer base pair values of claim [2]."
(Br. 36.) 10 We are not persuaded, at least because Oldroyd teaches the use
of integer values of base pair sizes. (FF 6.)
Claim 29
Claim 29 depends from claim 27, which depends from claim 3. 11 (Br.
42--44.) Claim 29 recites that "after the inferring step there is the additional
10 Appellant advances this argument in connection with both claim 3 0 and
claim 2 but, as the Examiner points out, claim 30 does not recite the use of
integer values. (Ans. 11.)
11 Claim 3 depends from claim 2 and recites that after the analyzing step (f)
"there is the additional step of determining a length or amount of a fragment
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step of comparing the individual's genotype with a genotype of another
individual." (Id. at 44.) Appellant argues that this limitation of comparing
individuals is "completely unsupported" by the cited art, and particularly by
Lazaruk. (Id. at 36-39.)
We are not persuaded. As set forth by the Examiner, Oldroyd shows a
comparison of genotypes of individual in Table 2, and Lazaruk teaches
human databases. (Ans. 12; FF 13; see also FF 1 and 2 regarding teachings
of Butler.)
Claim 5
Claim 5 is an independent system claim that Appellant characterizes
as "essentially [having] the limitations of claim 2, but also utilizes and
includes the limitation of a computer of claim 3 0 because claim 5 has means
plus function language." (Br. 39.) Appellant also argues that the
"transforming means" of claim 5 includes the use of a computer and the
"analyzing means" of claim 5 refers to computer software. (Id.) Appellant
further argues that the cited prior art does not teach or suggest any of the
specific preferred embodiments where all the limitations from the
Specification regarding the "analyzing means" are included in the analyzing
step of claim 5. (Id. at 39--40.)
We are not persuaded. The mere addition of a computer or computer
software does not render the claims patentable, particularly in light of the
in the nucleic acid sample." (Br. 42.) Claim 27 recites that after the
determining step "there is the additional step of inferring a genotype of an
individual using the length or amount of a fragment in the nucleic acid
sample to call alleles." (Br. 43.)
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cited art that specifically uses a computer and computer software. (See, e.g.,
FF 5, 7, 11, and 14.)
Claim 4
Claim 4 depends on claim 3 and recites "wherein after the
determining step there is the additional step of identifying an individual by
DNA profiling." (Br. 42.) According to Appellant, "[t]he Examiner does
not mention specifically 'DNA profiling' at all, let alone identifying an
individual using DNA profiling." (Br. 41.)
We are not persuaded. As noted by the Examiner, the Specification
does not define "DNA profiling," and the claim limitation is shown by the
guidance in Butler, Oldroyd, and Lazaruk. (Ans. 12; see FF 3 and Oldroyd's
specific reference to "DNA profiling.")
Summary
Appellant's arguments do not persuade us of any error in the
Examiner's prima facie case, and Appellant's evidence is insufficient to
rebut that prima facie case. Accordingly, we find that Appellant's evidence
and arguments of long-felt need, commercial success, and copying do not
outweigh the Examiner's findings and conclusion of obviousness of claims
30, 31, 2, 29, 5, and 4.
Accordingly, for the reasons of record and as set forth above, we
affirm the rejections of claims 30, 31, 2, 29, 5, and 4. Claims 3, 6, and 27-
29 were not argued separately and fall with claim 2.
Conclusions of Law
A preponderance of evidence of record supports the Examiner's
rejection of claims 2---6 and 27-31 under 35 U.S.C. § 103(a).
18
Appeal2017-000982
Application 12/584,761
SUMMARY
We affirm the rejection of all claims 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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