Ex Parte Stenger et al

Patent Trial and Appeal Board

May 16, 2018

13211382 (P.T.A.B. May. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/211,382 08/17/2011
26384 7590 05/16/2018
NAVAL RESEARCH LABORATORY
AS SOCIA TE COUNSEL (PA TENTS)
CODE 1008.2
4555 OVERLOOK A VENUE, S.W.
WASHINGTON, DC 20375-5320
FIRST NAMED INVENTOR
David A. Stenger
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.
96744-US3 4089
EXAMINER
DEJONG, ERIC S
ART UNIT PAPER NUMBER
1631
MAILDATE DELIVERY MODE
05/16/2018 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 DAVID A. STENGER and JENNIFER THORNTON
Appeal2017-007573
Application 13/211,3 82 1
Technology Center 1600
Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
DAVID COTTA, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1 and 23 (Final
Act. 2 2). 3 Examiner entered a rejection under 35 U.S.C. § 101. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify the real party in interest as "The Government of the
United States of America, as represented by the Secretary of the Navy"
(App. Br. 2).
2 Office Action mailed May 4, 2016.
3 Pending claims 2, 3, and 8-22 stand withdrawn from consideration (Final
Act. 2).
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Application 13/211,3 82
STATEMENT OF THE CASE
Appellants' disclosure "is relevant to a variety of automated selection
systems including automated sub-sequence selection systems for usage with
any method group of nucleic acid or protein sequences generated by
alternative methods" (Spec. i-f 3). Appellants' claim 1 is representative and
reproduced below:
1. A method for selecting a biological subsequence for input to
a query for identification of a predetermined biological
sequence, comprising steps of:
performing a resequencing microarray assay on a
biological sample derived from a clinical sample suspected of
containing a pathogen causing a disease;
obtaining biological sequence data from the resequencing
microarray;
storing the biological sequence data in a computer
memory;
selecting with a processor-implemented process a
subsequence from the biological sequence data by;
selecting a fixed window size parameter
corresponding to a number of base calls in the biological
sequence data;
calculating the percentage of valid base calls
contained within a viewing window of the biological
sequence data, the size of the window corresponding to
the window size parameter;
if the percentage of valid base calls is not at least a
first predetermined threshold, sliding the viewing
window a first number of base calls one or more times
along the biological sequence data until a recalculated
percentage of valid base calls in the viewing window is at
least the first predetermined threshold;
marking the beginning of the biological
subsequence at the beginning of the viewing window;
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Application 13/211,3 82
sliding the viewing window a second number of
base calls along the biological sequence data;
calculating the percentage of valid base calls
contained within the viewing window;
if the percentage of valid base calls is at least a
second predetermined threshold, sliding the viewing
window a second number of base calls one or more times
along the biological sequence data until a recalculated
percentage of valid base calls in the viewing window is
not at least the second predetermined threshold;
marking the end of the biological subsequence at
the end of the viewing window; and
shifting the beginning and end of the biological
subsequence to remove any non-base calls from the
beginning and end of the biological subsequence without
removing valid base calls;
submitting the biological subsequence in a computer-
based query to a biological sequence database to identify the
predetermined biological sequence and the pathogen; and
diagnosing the disease on the basis of the pathogen.
(App. Br. 8-9.)
The claims stand rejected as follows:
Claims 1 and 23 stand rejected under 35 U.S.C. § 101.
ISSUE
Does the evidence of record support Examiner's finding that
Appellants' claimed invention is directed to patent ineligible subject matter?
ANALYSIS
The scope of 35 U.S.C. § 101 "is subject to an implicit exception for
'laws of nature, natural phenomena, and abstract ideas,' which are not
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patentable." Intellectual Ventures I LLC v. Capital One Financial Corp.,
850 F.3d 1332, 1338 (Fed. Cir. 2017), citing Alice Corp. Pty. Ltd. v. CLS
Bankint'l., 134 S. Ct. 2347, 2355 (2014); see also Mayo Collaborative
Services v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) ("'[L]aws of
nature, natural phenomena, and abstract ideas' are not patentable" (citation
omitted, alteration original)).
Alice, sets forth the following two-step analysis for determining patent
eligibility under Section 101 :
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts [e.g., a law of nature,
natural phenomenon, or abstract idea]. If so, we then ask, what
else is there in the claims before us? . . . We have described
step two of this analysis as a search for an inventive concept-
i.e., an element or combination of elements that is sufficient to
ensure that the patent in practice amounts to significantly more
than a patent upon the ineligible concept itself.
Alice, 134 S. Ct. at 2355 (alterations, citations, and quotation marks
omitted).
With respect to Alice's first step, Examiner finds that, when
considered as a whole, Appellants' claimed invention involves a "'process
implemented function' [that] serves only to describe an abstract idea in the
form of a series of computational and algorithmic operations to be
performed on the biological data, per se" (Final Act. 3; Ans. 3). In this
regard, Examiner finds that Appellants' "claimed invention is essentially
directed to an abstract idea of microarray data analysis, applied merely using
a generic computer (via a 'processor implemented process')" (Final Act. 4;
Ans. 3). Thus, Appellants' claimed invention comprises, at best, the steps of
collecting, manipulating, and displaying data. "[A Jn invention directed to
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collection, manipulation, and display of data [is] an abstract process."
Intellectual Ventures, 850 F.3d at 1340; see generally id. at 1340-41.
Without additional limitations, a process that employs
mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible. "If a
claim is directed essentially to a method of calculating, using a
mathematical formula, even if the solution is for a specific
purpose, the claimed method is nonstatutory." Parker v. Flook,
437 U.S. 584, 595[] (1978) (internal quotations omitted).
Digitech Image Techs., LLC v. Elecs. For Imaging, Inc., 758 F.3d 1344,
1351 (Fed. Cir. 2014). See also FairWarning IP, LLC v. Iatric Systems,
Inc., 839 F.3d 1089, 1093 (Fed. Cir. 2016) ("analyzing information by steps
people go through in their minds, or by mathematical algorithms, without
more," are "essentially mental processes within the abstract-idea category);
cf App. Br. 4--5 (Appellants' contend that their "process brings about a
technological improvement by[, inter alia,] saving time for the researcher
who does not have to manually select sequences or review irrelevant search
results" (emphasis added)).
With respect to Alice's second step, the search for an inventive
concept, Examiner finds that Appellants' claims do not include additional
elements or steps that are sufficient to amount to significantly more than the
judicial exception (see Final Act. 3-5; see Ans. 2--4). To the contrary,
Examiner finds that the non-processor implemented "steps only involve
conventional and routine microarray data collection procedures and ... do
not involve any specific technological improvement" (Final Act. 3; Ans. 3).
In this regard, Examiner finds that these non-processor implemented steps
"fail to delineate any additional elements that are sufficient to amount to
significantly more than the judicial exception" (Final Act. 4; Ans. 4). See
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Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016)
(Appellants "must provide something inventive, beyond mere well-
understood, routine, conventional activity") (quotation omitted).
In addition, Examiner finds that Appellants' claims fail to delineate
any specific or particular technological improvement" (Final Act. 4; Ans. 4).
See Enfzsh LLC v. Microsoft Corp., 822 F.3d 1327, 1335---6 (Fed. Cir. 2016).
For the foregoing reasons, we find no error in Examiner's finding that
Appellants' claimed invention is directed to patent ineligible subject matter.
Appellants recognize that the selection of a "subsequence had been
performed manually in the past," which supports Examiner's finding that the
non-processor implemented "steps [] involve conventional and routine []
data collection procedures and ... do not involve any specific technological
improvement" (App. Br. 6; see Reply Br. 1-2 ("The purpose [of Appellants'
claimed invention] is to identify a pathogen that is already known to include
sequence(s) that sufficiently match the selected sequence," wherein "[t]he
connection between the pathogen and the sequence(s) must already be
known to have been included in the database"); cf Final Act. 3; Ans. 3).
Appellants contend, however, that "there is no showing that anyone
had made the selection according to [Appellants'] claimed steps," wherein
their "processor-implemented steps are a new, improved method over the
prior art manual method, and they do not preempt all methods for improving
the selection of the subsequences" (App. Br. 6; see Reply Br. 2 ("The
claimed processor-implemented steps are a new, improved method over the
prior art manual method, and they do not preempt all methods for improving
the selection of the subsequences")). We find, however, that "simply
implementing a mathematical principle on a physical machine, namely a
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computer, [is] not a patentable application of that principle." Mayo, 566
U.S. at 84--86.
We are not persuaded by Appellants' contentions relating to McRO,
Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016).
See App. Br. 5---6; Reply Br. 2. In McRO, "the automation goes beyond
merely 'organizing [existing] information into a new form' or carrying out a
fundamental economic practice," or, as in this case, performing known
manual methods of manipulating sequence data on a computer. McRO, 837
F.3d at 1315 (alteration original). To the contrary, inMcRO "[t]he claimed
process use[ d] a combined order of specific rules that renders information
into a specific format that is then used and applied to create desired results:
a sequence of synchronized, animated characters." McRO, 837 F.3d at 1315.
Thus, in McRO "[t]he claim use[d] the limited rules in a process specifically
designed to achieve an improved technological result in conventional
industry practice." Id. at 1316. In contrast, as Appellants' concede, in their
discussion of so-called manual methods, which were known in the art, that
the abstract ideas embedded in their claim simply facilitates the use of "a
computer to accelerate an ineligible mental process[ 4J [, which] does not
make that process patent-eligible." Bancorp Servs., L.L.C. v. Sun Life
4 Appellants' contend that their "process[, inter alia,] brings about a
technological improvement by saving time for the research who does not
have to manually select sequences or review irrelevant search results" (App.
Br. 4). We recognize Appellants' contention that their claimed process also
"sav[ es] computer resources by not performing useless searches[] and
improve[s] upon methods of unknown biological sample identification" (id.
at 4--5). Appellants, however, fail to identify an evidentiary basis on this
record to support their contentions. See In re Pearson, 494 F.2d 1399, 1405
( CCP A 197 4) ("Attorney's argument in a brief cannot take the place of
evidence").
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Assurance Co., 687 F.3d 1266, 1279 (Fed. Cir. 2012); see also FairWarning,
839 F.3d at 1093 ("analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more," are "essentially
mental processes within the abstract-idea category"). Therefore, we are not
persuaded by Appellants' contention that their claimed invention "is not an
abstract idea under McRO" and "[a]s such there is no need to proceed to
Alice step two" (App. Br. 6; see also Reply Br. 2).
CONCLUSION OF LAW
The evidence of record supports Examiner's finding that Appellants'
claimed invention is directed to patent ineligible subject matter. The
rejection of claim 1 under 35 U.S.C. § 101 is affirmed. Appellants' Claim
23 is not separately argued and falls with Appellants' claim 1.
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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