Ex Parte Van Den Bogaard et al

Patent Trial and Appeal BoardMay 26, 2017

13262844 (P.T.A.B. May. 26, 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. 13/262,844 10/04/2011 Patrick Theodoor Christian Van Den Bogaard 2009P00106WOUS 5210 24737 7590 05/31/2017 PTTTT TPS TNTFT T FfTTTAT PROPFRTY fr STANDARDS EXAMINER 465 Columbus Avenue WILDER, CYNTHIA B Suite 340 Valhalla, NY 10595 ART UNIT PAPER NUMBER 1637 NOTIFICATION DATE DELIVERY MODE 05/31/2017 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): marianne. fox @ philips, com debbie.henn @philips .com patti. demichele @ Philips, com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PATRICK THEODOOR CHRISTIAN VAN DEN BOGARRD and ASTRID ELISABETH VISSER1 Appeal 2016-003313 Application 13/262,844 Technology Center 1600 Before DONALD G ADAMS, JOHN E. SCHNEIDER, and RYAN H. FLAX, Administrative Patent Judges. SCHNEIDER, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellants request rehearing of the decision entered January 31, 2017 (“Decision”). Appellants assert the decision was in error because the Board failed to consider the claims as a whole in reaching our decision regarding patent ineligible subject matter. Req. Reh’g 4. We have considered the arguments presented by Appellants and are not persuaded that we 1 Appellants identify the Real Party in Interest as KONINKLIJKE PHILIPS ELECTRONICS NV. Appeal Br. 3. Appeal 2016-003313 Application 13/262,844 misapprehended or overlooked any issues of fact or law in the Decision. The request for rehearing is denied. In the Request for Rehearing, Appellants argue that when determining subject matter eligibility, the Board should consider the claims as a whole and “that claims to new, useful, or improved processes that apply, rely upon, utilize, or exploit recited natural phenomena, pass the first step of the Alice- Mayo two-step test.” Req. Reh’g 4. Appellants argue that the rejected claims are analogous to the claims in Thales Visionix v United States, 850 F.3d 1343 (Fed. Cir. 2017) and Rapid Litigation Management, Ltd. v. CellzDirect, Inc., 827 F.3d 1042 (Fed. Cir. 2016), where our reviewing court found the claims to be directed to patentable subject matter. Req. Reh’g. 7. We have considered Appellants’ arguments and find them unpersuasive. Claim 1 is directed to “[a] method for detection and characterization of toxinogenic Clostridium difficile strain.” Appeal Br. 18 (Claims Appendix). This is accomplished by looking for one or more deletions in the bacteria’s genome — something Appellants admit constitutes natural phenomenon. Appeal Br. 7. The claim-recited techniques used to identify the deletions, e.g., PCR, are well known in the art. Ans. 12. As discussed in our Decision, this case is similar to the facts in Genetic Techs Ltd, where our reviewing court observed that “the patent claim focuses on a newly discovered fact about human biology (the linkage of coding and non coding regions of DNA), involves no creation or alteration of DNA sequences, and does not purport to identity novel detection techniques.” Genetic Techs Ltd. V. MerialL.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). In Genetic Techs, the Court upheld a finding that the claims were not directed to patentable subject matter. Id. 2 Appeal 2016-003313 Application 13/262,844 Thales and Rapid Litigation are distinguishable from the present case. In both Thales and Rapid Litigation, the claimed invention involved at least one element that was unconventional. See, Thales, 850 F.3d at 1348-49 (sensor placed in an unconventional manner), Rapid Litigation, 827 F.3d at 1049 (conventional preparations were unable to achieve the same results.) In contrast, the present invention uses conventional techniques to detect a natural phenomenon. Appellants have offered no evidence to the contrary. In sum, we have considered the Request for Rehearing but decline to make any change in the Decision. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). REHEARING DENIED 3