Ex Parte Schumacher et al

Patent Trials and Appeals Board

Mar 29, 2019

14420501 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/420,501 03/04/2015
26356 7590 04/02/2019
ALCON
IP LEGAL
6201 SOUTH FREEWAY
FORT WORTH, TX 76134
FIRST NAMED INVENTOR
Silvia Schumacher
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.
PAT905095-US-PCT 7938
EXAMINER
TOWA,RENET
ART UNIT PAPER NUMBER
3791
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
patent. docketing@alcon.com
alcon_pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIL VIA SCHUMACHER, MICHAEL MROCHEN,
CHRISTIAN WUELLNER, CHRISTOF DONITZKY, and
KLAUS VOGLER
Appeal2018-003406
Application 14/420,501
Technology Center 3700
Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
BRANDON J. WARNER, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Silvia Schumacher et al. ("Appellants") 1 appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision rejecting claims 1, 3-12, and 14--22
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. 2
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Novartis AG. Appeal
Br. 2.
2 Claims 2 and 13 are cancelled. Appeal Br. 28, 30 (Claims App.).
Appeal2018-003406
Application 14/420,501
THE CLAIMED SUBJECT MATTER
Claims 1 and 12 are independent. Claim 1, reproduced below, is
illustrative of the subject matter on appeal.
1. A method comprising:
receiving information describing a tissue region of a tissue
where laser pulses are applied to yield a plurality oflaser-induced
optical breakdowns (LIOBs) in the tissue region, the LIOBs
yielding a plurality of bubbles of gas;
estimating from the information a concentration of the gas
in the tissue region, the estimating comprising:
calculating a previous concentration of the gas due
to one or more previous laser pulses of the laser pulses;
calculating a diffusion of the gas away from the
tissue region; and
estimating the concentration of the gas from the
previous concentration of the gas and the diffusion of the
gas away from the tissue region; and
adjusting one or more laser parameters in response to the
concentration of the gas to satisfy a critical concentration rule.
PRINCIPLES OF LAW
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 long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's 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)). In accordance with that framework,
2
Appeal2018-003406
Application 14/420,501
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, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
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 ( Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited 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 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated 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
3
Appeal2018-003406
Application 14/420,501
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, where "we must 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).
"[M]erely 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. See USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (the
"2019 Revised Guidance"). Under the 2019 Revised Guidance, we first look
to 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 § 2106.05(a}-(c), (e}-(h)).
4
Appeal2018-003406
Application 14/420,501
See 2019 Revised Guidance.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(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 2019 Revised Guidance.
OPINION
Claims 1 and 3-11
In contesting the rejection, Appellants present arguments for
independent claim 1 and do not separately argue dependent claims 3-11.
Appeal Br. 19-22. We select claim 1 as representative, and claims 3-11
stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
In rejecting claim 1, the Examiner determines that the recited
steps/ elements describe the concept( s) of providing an algorithm
for estimating a concentration of the gas in the tissue region from
the information describing a tissue region of a tissue where laser
pulses are applied to yield a plurality of laser-induced optical
breakdowns (LIOBs) in the tissue region, which correspond(s) to
concept(s) identified as abstract ideas by the courts, such as
algorithm for calculating parameters indicating an abnormal
condition ([In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989)]).
All [ of] these concepts relate to mathematical
relationships/formulas.
5
Appeal2018-003406
Application 14/420,501
Final Act. 3; see also id. ( explaining that "estimating a concentration of the
gas in the tissue region from the information describing a tissue region of a
tissue where laser pulses are applied to yield a plurality of laser-induced
optical breakdowns (LIOBs) in the tissue region is/are an abstract idea").
Appellants argue that claim 1 is not directed to an abstract idea.
Appeal Br. 19--20; Reply Br. 4---6. In particular, Appellants assert that
[ t ]he specific elements of Claim 1 [are] not comparable to the
concepts of: (1) a basic tool of scientific or technological work
as characterized by the Supreme Court; (2) a building block of
human ingenuity as characterized by the Supreme Court; (3) a
fundamental economic practice long prevalent in our system of
commerce as characterized by the Supreme Court; ( 4) a building
block of the modem economy as characterized by the Supreme
Court; and (5) a well-known concept as characterized by the
Supreme Court.
Appeal Br. 20. We are not persuaded by this argument.
Claim 1 recites a method that includes "receiving information"
describing a tissue region where laser pulses are applied, "estimating" a gas
concentration in the tissue by "calculating" previous gas concentration and
gas diffusion from the tissue, and "adjusting" a laser parameter in response
to the estimated gas concentration. Appeal Br. 28 (Claims App.). These
steps amount to receiving information (i.e., tissue information) and
generating additional information (i.e., a gas concentration estimate) using
an algorithm. 3 Our reviewing courts have held claims ineligible under § 101
3 Although claim 1 recites the algorithm in words rather than as a
mathematical formula, the claim nevertheless recites an algorithm. See In re
Grams, 888 F.2d at 837 n.1 ("It is of no moment that the algorithm is not
expressed in terms of a mathematical formula. Words used in a claim
operating on data to solve a problem can serve the same purpose as
a formula.").
6
Appeal2018-003406
Application 14/420,501
when directed to manipulating existing information, such as by using
mathematical algorithms, to generate additional infon11ation. See Flook, 437
U.S. at 585, 594---96 (rejecting as ineligible claims directed to (1) measuring
the current value for a variable in a catalytic conversion process, (2) using an
algorithm to calculate an updated "alarm-limit value" for that variable, and
(3) updating the limit with the new value); Benson, 409 U.S. at 71-72
(rejecting as ineligible claims directed to an algorithm for converting binary-
coded decimal numerals into pure binary form); Digitech Image Techs., LLC
v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) ("Without
additional limitations, a process that employs mathematical algorithms to
manipulate existing information to generate additional information is not
patent eligible."); S1nartGene, Inc. v. Advanced Biological Labs., S.A., 555
Fed. App'x. 950, 951-55 (Fed. Cir. 2014) (comparing new and stored
information and using rules to identify options). Accordingly, we conclude
the claims recite mathematical relationships/fon1rnlas, which are a
mathematical concept identified in the 2019 Revised Guidance as a judicial
exception, and thus an abstract idea.
Appellants argue that "the Office Action presents no references that
teach or suggest the claimed invention. Therefore, Claim 1 is presumably
directed to novel and non-obvious subject matter. Thus, the method of
Claim 1, by definition, is not any of the abstract ideas ( 1 )-( 5) characterized
by the Supreme Court." Appeal Br. 20. This argument is unpersuasive. As
the Supreme Court has stated, "[t]he 'novelty' of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter." Diehr, 450 U.S. at 188-89. In other
7
Appeal2018-003406
Application 14/420,501
words, to the extent Appellants are arguing that the claimed invention is not
directed to an abstract idea because it is novel and nonobvious, we are not
persuaded because a novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90;
see also Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013) ("Groundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the § 101 inquiry."); Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (citing Mayo, 566
U.S. at 90) (a finding that the claims are novel and nonobvious in light of an
absence of evidence does not conflict with the Examiner's conclusion under
35 U.S.C. § 101 because "a claim for a new abstract idea is still an abstract
idea"); and Flook, 437 U.S. at 594--96 (determining claims to "a new and
presumably better method for calculating alarm limit values," which were of
undisputed usefulness, were nevertheless directed to patent-ineligible subject
matter).
We have also considered Appellants' argument that there are
limitations that "prevent preemption of providing an algorithm for
estimating a concentration of the gas in the tissue region." Appeal Br. 22.
Merely because claims do not preempt all forms of the abstraction does not
make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1362-63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all
price optimization or may be limited to price optimization in the
e-commerce setting do not make them any less abstract."). Moreover,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the dispositive test for patent
eligibility. Although "preemption may signal patent ineligible subject
8
Appeal2018-003406
Application 14/420,501
matter, the absence of complete preemption does not demonstrate patent
eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015).
Following our Office guidance, having found that claim 1 recites a
judicial exception, namely, mathematical relationships/formulas, we are
instructed next to determine whether the claim recites "additional elements
that integrate the judicial exception into a practical application (see MPEP
§ 2106.05(a}-(c), (e}-(h))." See 2019 Revised Guidance. Although the
Examiner identifies the "receiving" and "adjusting" steps in claim 1 as
additional elements (Final Act. 3; Ans. 7), in our view, the claimed step of
"receiving information describing a tissue region of a tissue" amounts to
mere data gathering and is insignificant extra-solution activity. MPEP
§ 2106.05(g) (citing PerkinElmer, Inc. v. Intema Ltd., 496 Fed. App'x. 65,
73 (Fed. Cir. 2012) (determining that "data-gathering steps are conventional
and obvious extra-solution activity that cannot save the claims" with respect
to assessing or measuring data derived from an ultrasound scan). In
addition, the claimed step of "adjusting one or more laser parameters" also
constitutes insignificant extra-solution activity. See MPEP § 2106.05(g)
((citing Flook, 437 U.S. at 590) and describing Flook as "holding that step of
adjusting an alarm limit variable to a figure computed according to a
mathematical formula was 'post-solution activity"').
The adjusting step does not implement the abstract idea with a
particular machine or manufacture that is integral to the claim. Notably,
claim 1 does not recite any structural element (e.g., a computer) that
performs the claimed steps. The adjusting step also does not reflect an
improvement in the functioning of a computer, or an improvement to other
9
Appeal2018-003406
Application 14/420,501
technology or technical field. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1258-59 (Fed. Cir. 2014). In particular, claim 1 does not
recite any language tying the laser parameter adjustment step to the
operation of a laser (it simply adjusts a parameter). Consequently, the claim
does not integrate the judicial exception into a practical application.
Because we determine the claim fails to recite additional elements that
integrate the judicial exception into a practical application, in accordance
with the Office guidance we next consider whether the claim adds a specific
limitation beyond the judicial exception that is not "well-understood,
routine, conventional" in the field or instead "simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception."
See 2019 Revised Guidance. That is, we consider whether the claim
"appl[ies ], rel[ies] on, or use[ s] the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception."
See id.
The Examiner determines that "[t]he claim(s) do(es) not include
additional elements that are sufficient to amount to significantly more than
the judicial exception." Final Act. 3. The Examiner explains that the
additional steps of "receiving" and "adjusting" recited in claim 1 "do not
impose any meaningful limit[ s] on the implementation of the abstract idea."
Id. The Examiner also explains that "[l]ooking at the limitations as a whole
adds nothing that is not already present when looking at the element( s) taken
individually. There is no indication that the combination of elements
improves the technology. Their collective functions are merely conventional
10
Appeal2018-003406
Application 14/420,501
in implementation." Id. at 4; see also Ans. 7 (explaining that "the
'receiving ... ' and 'adjusting ... ' steps are well-known, [routine,] and
conventional steps in the art").
Appellants argue that claim 1 includes additional elements amounting
to significantly more than the abstract idea. Appeal Br. 21-22. In particular,
Appellants assert that "[ c ]laim 1 defines limitations ... that require at least
as much as, if not more than, the eligible McRO claims." Id. (citing McRO,
Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir.
2016)). According to Appellants,
the specific elements of [ c ]laim 1 relate to estimating a
concentration of a gas in a tissue region by, among other things,
calculating a previous concentration of the gas due to one or
more previous laser pulses of the laser pulses, and further
adjusting a laser parameter in response to the concentration to
satisfy a critical concentration rule. The claims thus concern a
specific improvement to address a problem rooted in laser
surgery - namely, adverse effects of gas bubbles that form in
tissue when laser pulses are applied. These limitations prevent
preemption of providing an algorithm for estimating a
concentration of the gas in the tissue region.
Id. at 22.
We are unpersuaded by Appellants' attempt to analogize the instant
claim to the claim determined to be eligible in McRO. Appeal Br. 21-22. In
McRO the claim at issue was directed to automatically animating the lip
synchronization and facial expressions of three-dimensional animated
characters. McRO, 837 F.3d at 1307---08. There, the Federal Circuit
determined that the claimed invention, considered as a whole, used limited
rules in a process specifically designed to achieve a technological
improvement over existing, manual 3-D animation techniques. Id. at 1316.
As such, the court determined that McRO's claim is not directed to an
11
Appeal2018-003406
Application 14/420,501
abstract idea, and is patent-eligible under 35 U.S.C. § 101. Id. According to
McRO, the relevant question is whether the claim as a whole "focus[ es] on a
specific means or method that improves the relevant technology" or is
"directed to a result or effect that itself is the abstract idea and merely invoke
generic processes and machinery." McRO, 837 F.3d at 1314. Here, the
claim, as a whole, is focused on gathering data (i.e., tissue data) and using a
mathematical algorithm to generate additional data (i.e., estimate a gas
concentration) and manipulate other data (i.e., adjust laser parameters). The
additional element of "adjusting one or more laser parameters" is viewed to
be a result or an effect, and not an improvement in the technology of how a
laser works.
In short, the additional elements recited in the claims (1) do not
improve the functioning of a computer or other technology, (2) are not
applied with any particular machine, (3) do not effect a transformation of a
particular article to a different state, and ( 4) are not applied in any
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception. See
MPEP § 2106.05(a}-(c), (e}-(h).
Appellants also argue that "the method of [ c ]laim 1, by definition, is
not 'merely conventional in implementation."' Appeal Br. 22; see also
Reply Br. 3--4 ( asserting that the "Office Action[] did not contain any § § 102
or 103 rejections" and "thus the [e]stimating [e]lements are not well-known,
routine[,] and conventional). Appellants have pointed only to the steps
reciting the judicial exception (i.e., mathematical relationships/formulas) as
being not well-known, routine, and conventional, whereas we are looking for
12
Appeal2018-003406
Application 14/420,501
an element or combination of elements that ensures that the claim is more
than the ineligible judicial exception of mathematical relationships/formulas.
To the extent Appellants are suggesting that the step of adjusting one
or more laser parameters in response to the concentration of the gas to
satisfy a critical concentration rule is not well-known, routine, and
conventional (Reply Br. 7-8), Appellants' Specification points to lasers as
having
parameters that instruct the laser to operate in a particular
manner, and may designate, e.g., the energy or position (in the x,
y, and/or z direction of a laser pulse or the timing of one or more
pulses. An example of a laser parameter that can be adjusted is
the repetition rate.
Spec. 8:7-10. Appellants also acknowledge that Karavitis (US
2011/0206071 Al; pub. Aug. 25, 2011) "discloses adjusting the repetition
rate to maintain a particular density of laser-generated bubbles." Reply
Br. 4. Thus, we agree with the Examiner that adjusting laser parameters is
well-known, routine, and conventional. That Appellants may adjust the laser
parameters in response to a concentration of gas that has been calculated in
accordance with particular mathematical relationships/formulas relates back
to the judicial exception, rather than being a specific limitation beyond the
judicial exception.
For the reasons discussed above, we find no element or combination
of elements recited in claim 1 that contains any "inventive concept" or adds
anything "significantly more" to transform the abstract concept into a patent-
eligible application. Alice, 573 U.S. at 221. Accordingly, we sustain the
Examiner's decision rejecting claim 1, and claims 3-11 falling therewith,
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
13
Appeal2018-003406
Application 14/420,501
Claims 12 and 14-22
Appellants present arguments for independent claim 12 and do not
separately argue dependent claims 14--22. Appeal Br. 22-26. We select
claim 12 as representative, and claims 14--22 stand or fall with claim 12.
Claim 12 recites "[a] system comprising: a laser device configured to
apply a plurality of laser pulses to a tissue region ... ; and a control
computer configured to" perform essentially the same method steps of claim
1. Id. at 28 (Claims App.). For the same reasons discussed above, we
determine that claim 12 recites mathematical relationships/formulas by
virtue of reciting a control computer configured to "estimat[ e J from ...
information [ a J concentration of ... gas in [a] tissue region" through various
calculations. See Final Act. 6-7. 1\tfathematical relationships/formulas are a
mathematical concept identified in the 2019 Revised Guidance as a judicial
exception, and thus an abstract idea. For the same reasons discussed above,
we also determine that the control computer being configured to "receive
information" and '"adjust one or more laser parameters" amounts to the
recitation of insignificant extra-solution activity and does not integrate the
judicial exception into a practical application or otherwise transform the
judicial exception into a patent-eligible application. Similarly, we determine
the recitation of "a laser device configured to apply a plurality of laser pulses
to a tissue region" in claim 12 relates to the generation of the information to
be received by the computer and used with the mathematical algorithms,
rather than sufficiently integrating the judicial exception into a practical
application or adding a specific limitation that is not "well-understood,
routine, conventional" in the field. See Final Act. 7 ("There is no indication
14
Appeal2018-003406
Application 14/420,501
that the combination of elements improves the technology. Their collective
functions are merely conventional in implementation.").
Appellants initially rely on the same arguments and reasoning we
found unpersuasive in connection with independent claim 1 as the basis for
seeking reversal of independent claim 12. Appeal Br. 22-26 (asserting
virtual identical arguments to those presented in connection independent
claim 1 ). For the same reasons discussed above in connection with the
rejection of claim 1, we find these arguments unpersuasive of error in the
Examiner's rejection of claims 12 and 14--22 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter.
Appellants also argue that the Examiner "fails to show [that] the
claimed control computer is well-known, routine, and conventional." Reply
Br. 8 (boldface omitted). More specifically, Appellants argue that the
Examiner has failed to show "a control computer configured to 'adjust one
or more laser parameters in response to the concentration of the gas to
satisfy a critical concentration rule."' Id. at 9.
The Specification describes control computer 30 in only generic
terms, using generic computer components to perform routine and
conventional data-gathering, mathematical calculation functions, and control
functions, as recited in the claim. Spec. 3, 11. 14--21; 5, 11. 14--16; 13, 1. 30-
14, 1. 6. In other words, control computer 30 functions in a conventional
manner to execute program instructions and operations, such as a control
program that contains computer code to instruct controllable elements ( e.g.,
lasers) in a certain way. Id. at 5: 14--18. We agree with the Examiner that
the additional element of a control computer configured to adjust one or
more laser parameters is well-understood, routine, and conventional.
15
Appeal2018-003406
Application 14/420,501
Ans. 8-10; see also Alice, 573 U.S. at 226 ("Nearly every computer will
include a 'communications controller' and 'data storage unit' capable of
performing the basic calculation, storage, and transmission functions
required by the method claims."); id. at 225 ("[W]ith respect to the use of a
computer to obtain data ... and issue automated instructions; all of these
computer functions are 'well-understood, routine, conventional activit[ies]'
previously known to the industry"). That the control computer may adjust
one or more laser parameters in response to a concentration of gas that has
been calculated in accordance with particular mathematical
relationships/formulas relates back to the judicial exception, rather than
being a specific limitation beyond the judicial exception.
For the foregoing reasons, we sustain the rejection of claim 12, and
claims 14--22 falling therewith, under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter.
DECISION
The Examiner's decision to reject claims 1, 3-12, and 14--22 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
16