Ex Parte Vaske et al

Patent Trial and Appeal Board

Apr 17, 2018

13068002 (P.T.A.B. Apr. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/068,002 04/29/2011
26158 7590 04/19/2018
WOMBLE BOND DICKINSON (US) LLP
ATTN: IP DOCKETING
P.O. BOX 7037
ATLANTA, GA 30357-0037
FIRST NAMED INVENTOR
Charles J. Vaske
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.
U67909 lOlOUS.l 3320
EXAMINER
WHALEY, PABLO S
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
04/19/2018 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):
IPDocketing@wbd-us.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES J. VASKE, STEPHEN C. BENZ,
JOSHUA M. STUART, and DAVID HAUSSLER
Appeal2017-006005
Application 13/068,002 1
Technology Center 1600
Before DONALD E. ADAMS, ULRIKE W. JENKS, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal2 under 35 U.S.C. § 134(a) involves claims 1-5, 7, and
10-13 (App. Br. 1). 3 Examiner entered rejections under 35 U.S.C. § 112,
second paragraph, 35 U.S.C. § 101, and obviousness-type double patenting.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify the real party in interest as "the Regents of the
University of California" (App. Br. 1 ).
2 This Appeal is related to co-pending Appeal 2017-006133, Application
13/317 ,769.
3 Pending "[c]laims 8, 9 and 14-32 [stand] withdrawn" from consideration
(App. Br. 1 ).
Appeal2017-006005
Application 13/068,002
STATEMENT OF THE CASE
A central premise in modem cancer treatment is that
patient diagnosis, prognosis, risk assessment, and treatment
response prediction can be improved by stratification of cancers
based on genomic, transcriptional and epigenomic
characteristics of the tumor alongside relevant clinical
information gathered at the time of diagnosis (for example,
patient history, tumor histology and stage) as well as
subsequent clinical follow-up data (for example, treatment
regimens and disease recurrence events).
(Spec. i-f 2.) Appellants disclose, however, that "the challenges of
integrating multiple data sources to identify reproducible and interpretable
molecular signatures of tumorigenesis and progression remain elusive"
(Spec. i-f 7). In this regard, Appellants disclose that although "[a]pproaches
for interpreting genome-wide cancer data have focused on identifying gene
expression profiles that are highly correlated with a particular phenotype or
disease state, and have led to promising results" (Spec. i-f 8),
[ n Jew computational approaches are needed to connect multiple
genomic alterations such as copy number, DNA methylation,
somatic mutations, mRNA expression and microRNA
expression. Integrated pathway analysis is expected to increase
the precision and sensitivity of causal interpretations for large
sets of observations since no single data source is likely to
provide a complete picture on its own.
(Spec. i-f 14; see also id. i-f 19 ("There is currently a need to provide
methods that can be used in characterization, diagnosis, prevention,
treatment, and determining outcome of diseases and disorders")).
Therefore, Appellants disclose and claim "[a] method of generating a
dynamic pathway map (DPM)" (see App. Br. 24--25; Spec. i-f 20).
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Appellants' disclose, "[i]n one embodiment, ... a method of
generating a dynamic pathway map (DPM), [wherein] the method
compris[ es]" the following steps (see Spec. i-f 20):
(A) "providing access to a pathway element[4J database storing a
plurality of pathway elements, each pathway element being characterized by
its involvement in at least one pathway[5]" (id.);
4 Appellants disclose that a pathway element may be (i) a protein, "selected
from the group consisting of a receptor, a hormone binding protein, a kinase,
a transcription factor, a methylase, a histone acetylase, and a histone
deacetylase" or (ii) nucleic acid, "selected from the group consisting of a
protein coding sequence, a genomic regulatory sequence, a regulatory RNA,
and a trans-activating sequence" (Spec. i-f 20).
5 "In a preferred embodiment, the pathway is within a regulatory pathway
network" (Spec. i-f 20). In this regard, Appellants disclose:
In a more preferred embodiment, the regulatory pathway
network is selected from the group consisting of an ageing
pathway network, an apoptosis pathway network, a homeostasis
pathway network, a metabolic pathway network, a replication
pathway network, and an immune response pathway network.
In a yet more preferred embodiment, the pathway is within a
signaling pathway network. In an alternative yet more
preferred embodiment, the pathway is within a network of
distinct pathway networks. In a most preferred embodiment,
the signaling pathway network is selected from the group
consisting of a calcium/ calmodulin dependent signaling
pathway network, a cytokine mediated signaling pathway
network, a chemokine mediated signaling pathway network, a
growth factor signaling pathway network, a hormone signaling
pathway network, a MAP kinase signaling pathway network, a
phosphatase mediated signaling pathway network, a Ras
superfamily mediated signaling pathway network, and a
transcription factor mediated signaling pathway network.
(Id. (emphasis added).)
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(B) "providing access to a modification engine coupled to the pathway
element database" (id.);
(C) "using the modification engine to associate a first pathway
element with at least one a priori known attribute[6]" (id.);
(D) "using the modification engine to associate a second pathway
element with at least one assumed attribute[7J" (id.);
(E) "using the modification engine to cross-correlate and assign an
influence level of the first and second pathway elements for at least one
pathway using the known and assumed attributes, respectively, to form a
probabilistic pathway model" (id.);
(F) "and using the probabilistic pathway model, via an analysis
engine, to derive from a plurality of measured attributes[SJ for a plurality of
elements of a patient sample the DPM having reference pathway activity
information[9J for a particular pathway" (id.).
6 "In a preferred embodiment, the known attribute is selected from the group
consisting of a compound attribute, a class attribute, a gene copy number, a
transcription level, a translation level, and a protein activity" (Spec. i-f 20).
7 "In another preferred embodiment, the assumed attribute is selected from
the group consisting of a compound attribute, a class attribute, a gene copy
number, a transcription level, a translation level, and a protein activity"
(Spec. ,-r 20).
8 "In another alternative embodiment, the measured attributes are selected
from the group consisting of a mutation, a differential genetic sequence
object, a gene copy number, a transcription level, a translation level, a
protein activity, and a protein interaction" (Spec. i-f 20).
9 Appellants disclose that "the reference pathway activity information is
specific with respect to a normal tissue, a diseased tissue, an ageing tissue,
or a recovering tissue" (Spec. i-f 20).
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Appellants' claim 1 representative and reproduced below:
1. A method of generating a dynamic pathway map (DPM),
compnsmg:
accessing a pathway element database storing a plurality
of pathway elements relating to gene expressions, activities or
products, the pathway elements comprising proteins;
associating a first pathway element of the pathway
element database with at least one a priori known attribute
relating to gene expressions, activities or products;
associating a second pathway element of the pathway
element database with at least one assumed attribute relating to
gene expressions, activities or products;
cross-correlating the first pathway element, the second
pathway element and at least one pathway;
assigning an influence level of the first and second
pathway elements for the at least one pathway using the known
attribute and the assumed attribute, based on the cross-
correlating;
converting each pathway of the at least one pathway, and
the influence level of the first and second pathway elements for
the at least one pathway, to a probabilistic model having each
interaction in each pathway represented as an edge in a factor
graph of a probabilistic pathway model, with the influence level
of the first and second pathway elements comprising one of a
negative value or a positive value, the negative value and the
positive value correlated to the corresponding edge of the factor
graph associated with the at least one pathway; and
deriving the DPM from expectation maximization of the
probabilistic pathway model and a plurality of measured
attributes for a plurality of elements based on a genome-scale
assay of a biological sample, the DPM inferring probabilistic
reference pathway activity information for a particular pathway;
and
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identifying an altered pathway based on pathway
inferences in the DPM, wherein at least one method operation is
executed by a processor.
(App. Br. 24--25.)
The claims stand rejected as follows:
Claims 1-5, 7, and 10-13 stand provisionally rejected under the
judicially created doctrine of obviousness-type double patenting as being
unpatentable over the claims of copending Application 13/317, 7 69.
Claims 1-5, 7, and 10-13 stand rejected under 35 U.S.C. § 112,
second paragraph.
Claims 1-5, 7, and 10-13 stand rejected under 35 U.S.C. § 101.
Obviousness-type Double Patenting:
Appellants do not contest and, thereby, waived appeal of the
provisional obviousness-type double patenting rejection on this record (see
generally Ans. 14; cf Final Act. 10 8). Therefore, we summarily affirm the
provisional rejection of claim 1 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over the claims of
copending Application No. 13/317,769.
10 Office Action mailed April 14, 2016.
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Definiteness: 11
ISSUE
Does the preponderance of evidence support Examiner's conclusion
that Appellants' claim 1 is indefinite?
ANALYSIS
Pathway elements relating to gene expressions, activities, or products:
The method of Appellants' claim 1 comprises, inter alia,
accessing a pathway element database storing a plurality
of pathway elements relating to gene expressions, activities or
products, the pathway elements comprising proteins;
associating a first pathway element of the pathway
element database with at least one a priori known attribute
relating to gene expressions, activities or products;
associating a second pathway element of the pathway
element database with at least one assumed attribute relating to
gene expressions, activities or products;
(App. Br. 24 (emphasis added).)
Examiner finds the terms "activities" and "products," as recited in
Appellants' claim 1, unclear. In this regard, Examiner finds "the terms
'activities' and 'products' ... are not defined in [Appellants']
[S]pecification and clearly encompass multiple plausible interpretations,
e.g., gene activities and gene products, metabolism, proteins, enzymes, etc."
(Final Act. 6 (emphasis added)). In addition, Examiner finds that although
11 Examiner found the phrase "cross-correlating the first pathway element,
the second pathway element, and at least one pathway" indefinite in the
recitation of the phrase "one pathway" (Final Act. 7). Appellants provided
arguments addressing Examiner's rejection (App. Br. 19-20). Thereafter,
Examiner did not repeat or address this indefiniteness issue in the Answer
(see generally Ans. 10-14). Therefore, we find that Examiner withdrew this
ground of rejection.
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paragraphs 20 and 83 of Appellants' Specification "provide[] examples of
pathway elements (e.g. as proteins and nucleic acids)," Appellants'
Specification "does not provide any limiting definitions that would serve to
clarify the scope of the claimed 'activities' and 'products"' (Ans. 11).
According to Appellants' Specification a pathway element may be (i)
a protein, "selected from the group consisting of a receptor, a hormone
binding protein, a kinase, a transcription factor, a methylase, a histone
acetylase, and a histone deacetylase" or (ii) nucleic acid, "selected from the
group consisting of a protein coding sequence, a genomic regulatory
sequence, a regulatory RNA, and a trans-activating sequence" (Spec. i-f 20).
Appellants further disclose that "[ m ]ultiple genome-scale measurements on
a single patient sample are combined to infer the activities of genes,
products, and abstract process inputs and outputs for a single national
Cancer Institute (NCI) pathway" (id. i-f 83).
Thus, Appellants contend that the phrase "pathway elements relating
to gene expressions, activities or products," as recited in Appellants' claim
1, refers to pathway elements relating to gene expressions, gene activities, or
gene products and agree with Examiner's finding that the scope of the
phrase "'pathway elements relating to gene expressions, activities, or
products' in claim 1, ... includes gene activities and gene products,
metabolism, proteins, and enzymes" (see App. Br. 19 (citing Spec. i-fi-120 and
83); Reply Br. 7 (emphasis added); cf App. Br. 24--25;). Stated differently,
in the context of Appellants' claim 1, gene expression, gene activity, or a
gene product represent an element of pathway, such as a metabolic pathway
(see Spec. i-fi-120). More than one element of a pathway, as recited in
Appellants' claim 1, through the use of the plural "pathway elements"
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would, as both Examiner and Appellants agree, read on a pathway, such as
metabolism, i.e., a metabolic pathway (see Final Act. 6; Reply Br. 7).
Thus, although we agree with Examiner's intimation that the phrase
"pathway elements relating to gene expressions, activities or products" is
broad, "breadth is not to be equated with indefiniteness." In re Miller, 441
F.2d 689, 693 (CCPA 1971).
The influence level of the first and second pathway elements:
The method of Appellants' claim 1 requires, inter alia,
assigning an influence level of the first and second
pathway elements for the at least one pathway using the known
attribute and the assumed attribute, based on the cross-
correlating; [and]
converting each pathway of the at least one pathway, and
the influence level of the first and second pathway elements for
the at least one pathway, to a probabilistic model having each
interaction in each pathway represented as an edge in a factor
graph of a probabilistic pathway model, with the influence level
of the first and second pathway elements comprising one of a
negative value or a positive value, the negative value and the
positive value correlated to the corresponding edge of the factor
graph associated with the at least one pathway.
(App. Br. 24.)
Examiner finds that "the meaning of the term 'influence level' is
unknown as this is a relative term" and Appellants' "[S]pecification does not
provide any limiting definitions, specific properties, or scoring criteria
indicating the scope of this term, i.e. the result is subjective and
imperceptible" (Final Act. 7). In this regard, Examiner finds that
Appellants' Brief fails to address this issue (see Ans. 11-12; cf App. Br. 19-
23). We agree.
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Although Appellant appears to address this issue in Appellants' Reply
Brief, Appellants failed to "explain what 'good cause' there might be to
consider the new argument. On this record, Appellant's new argument is
belated." See Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative); see also In re Berger, 279 F.3d 975, 984 (Fed. Cir. 2002).
Accordingly, we are compelled to affirm this ground of rejection.
Converting:
The method of Appellants' claim 1 requires, inter alia,
converting each pathway of the at least one pathway, and
the influence level of the first and second pathway elements for
the at least one pathway, to a probabilistic model having each
interaction in each pathway represented as an edge in a factor
graph of a probabilistic pathway model, with the influence level
of the first and second pathway elements comprising one of a
negative value or a positive value, the negative value and the
positive value correlated to the corresponding edge of the factor
graph associated with the at least one pathway.
(App. Br. 24.)
Examiner finds:
The meaning of the term "converting" is unknown because after
interpreting the claim in view of the specification, one of
ordinary skill in the art would not understand the boundary of
mathematical or computational operations required to achieve
the claimed result. Such generic functional claim language
amounts to descriptions of problems to be solved and/or
functions, and covers all means or methods of performing the
claimed functions.
(Final Act. 7.) Examiner recognizes that Appellants' Specification
"generically describe[ s] an approach to infer genetic pathways called
PARADIGM and the use of variables to 'describe states in a cell"' but
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"fail[ s] to provide any limiting definitions or clarifying examples of
'converting' pathways to a model that would serve to clarify the scope of the
mathematical or computational operations required to achieve the claimed
result" (Ans. 12). In this regard, Examiner finds:
Such generic functional claim language amounts to descriptions
of problems to be solved and/or functions, and covers all means
or methods of performing the claimed functions, i.e. doing
math, drawing (which is a means of converting ideas or
information into graphs, etc. Therefore, the examiner maintains
that the claim(s) is/are indefinite for failing to point out the
requisite computational techniques that are included or
excluded by the claim language, such that the artisan would
know how to avoid infringement.
(Ans. 12-13.)
Appellants contend that, notwithstanding Examiner's assertion to the
contrary, their Specification provides a description of the converting step,
such "one skilled in the art would understand the bounds of the claim when
read in light of [their] [S]pecification." See Miles Laboratories Inc. v.
Shandon Inc., 997 F.2d 870, 875 (Fed. Cir. 1993); see generally App. Br. 21
(citing Spec. i-fi-183-85, 146-150, and 153-155). More specifically,
Appellants contend that their Specification provides, inter alia, "a
mathematical description of how the entire graph of entities and factors
encodes the joint probability distribution over all of the entities," a
description of how "[ s ]tates are encoded in 1, 0 or -1," "the process of
converting a pathway into a directed graph," a description of "variables and
relationships among the variables," and provides additional "mathematical
relations" (App. Br. 21 (citing, interalia, Spec. i-fi-f 149, 150, and 153-155)).
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In sum, we find the evidence on this record favors Appellants. Claims
are not indefinite simply because they do not describe the invention using
numerical values. See In re Mattison, 509 F.2d 563, 565 (CCPA 1975). As
Appellants make clear, notwithstanding Examiner's assertion to the
contrary, their Specification provides the computation techniques that
Examiner finds "are included or excluded by [Appellants'] claim language"
(App. Br. 21; cf Ans. 12-13). Thus, on this record, Examiner failed to
explain why a person of ordinary skill in this art would not have reasonably
understood the bounds of Appellants' claimed invention when Appellants'
claim 1 is read in light of Appellants' Specification. See Miles Laboratories
Inc., 997 F.2d at 875.
Deriving the DPMfrom a plurality of measured attributes ... based on a
genome-scale assay:
The method of Appellants' claim 1 requires, inter alia,
deriving the DPM from expectation maximization of the
probabilistic pathway model and a plurality of measured
attributes for a plurality of elements based on a genome-scale
assay of a biological sample, the DPM inferring probabilistic
reference pathway activity information for a particular pathway.
(App. Br. 24--25.)
Examiner finds the phrase "based on a genome scale assay" indefinite
because Appellants' claim does "not require any positive process limitation
for performing any genomic assays" (Final Act. 7-8; see Ans. 13 ("the claim
was rejected for being indefinite because of the phrase 'based on a genome-
scale assay"')). According to Examiner, "[s]uch generic functional claim
language amounts to descriptions of problems to be solved and/or functions,
and covers all means or methods of performing the claimed functions, i.e.
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the claims generically read on 'doing math"' (Final Act. 8; see Ans. 13). We
are not persuaded.
As Appellants' explain, their "claims are not limited to any specific
manner of performing genomic assays in and of themselves" (App. Br. 22).
Stated differently, Appellants' claims are open to include obtaining "a
plurality of measured attributes for a plurality of elements based on [any]
genome-scale assay of a biological sample," available to a person of
ordinary skill in this art (see App. Br. 24--25). Thus, although Appellants'
claims is broadly written, "breadth is not to be equated with indefiniteness."
In re Miller, 441 F.2d at 693.
CONCLUSION
The preponderance of evidence supports Examiner's conclusion that
Appellants' claim 1 is indefinite with respect to "the meaning of the term
'influence level"' (Final Act. 7). The rejection of claim 1 under 35 U.S.C.
§ 112, second paragraph, is affirmed. Claims 2-5, 7, and 10-13 are not
separately argued and fall with claim 1.
Subject Matter Eligibility:
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
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
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Bank Int'!., 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 is "directed to
gathering data (using routine and conventional techniques and/ or
instrumentations), and mathematically manipulating the data (using a
general purpose computer) to generate additional data" (Final Act. 3; see
Ans. 2-3 and 9). Thus, Examiner finds that Appellants' claimed invention is
directed to an abstract idea, specifically "algorithmic concepts involving the
mathematical manipulation of data" (Final Act. 3; see Ans. 8). Thus,
Appellants' claimed invention comprises, at best, the steps of collecting,
manipulating, and displaying data. "[A Jn invention directed to collection,
manipulation, and display of data [is] an abstract process." Intellectual
Ventures, 850 F.3d at 1340; see generally id. at 1340-41.
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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).
With respect to Alice's second step, the search for an inventive
concept, Examiner finds that Appellants' "claims do not include additional
elements/steps appended to the abstract idea that are sufficient to amount to
significantly more than the judicial exception" (Final Act. 4; see Ans. 3--4).
In this regard, Examiner finds that the additional elements/steps appended to
the abstract idea set forth in Appellants' claimed invention are "routine and
conventional techniques for collecting data" (id.; see Ans. 6 ("high-
throughput technologies [] are well-known in the art"); see also Ans. 8-9
(citing Spec. i-fi-f 12-13) (Appellants' Specification "provides evidence that
pathway databases were routine and conventional in the art")). See 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).
Examiner finds that the "processor" limitation set forth in Appellants'
claimed invention "amount[ s] to nothing more than a general purpose
computer and/or general instructions for applying or using the judicial
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exception(s)" (Final Act. 4; see Ans. 8). See Mayo, 566 U.S. at 84--86
("simply implementing a mathematical principle on a physical machine,
namely a computer, [is] not a patentable application of that principle");
Alice, 134 S. Ct. at 2360 ("none of the hardware recited by the[] claims
'offers a meaningful limitation beyond generally linking 'the use of the
[method] to a particular technological environment,' that is, implementation
via computers" (alteration original)).
In addition, Examiner finds that Appellants' "claims fail to recite any
limitations that purport to improve the functioning of a specific claimed
device, effect an improvement to the technology or technical field, or
provide meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment" (Final Act. 4; see
Ans. 6-7). See Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1335---6 (Fed.
Cir. 2016).
Examiner finds that the requirements of Appellants' dependent claims
2-5, 7, and 10-13 "do nothing more than further limit the type of pathway,
the type of protein data, and the type of attributes being used in [the] judicial
exception, and therefore do not add significantly more to the judicial
exception" (Ans. 10).
For the foregoing reasons, we find no error in Examiner's finding that
Appellants' claimed invention is directed to patent ineligible subject matter.
For the foregoing reasons, we are not persuaded by Appellants'
contention that Examiner failed to "identify[] the alleged abstract idea"
(App. Br. 4; see id. at 5 and 7-8; cf Final Act. 3--4; Ans. 2--4).
For the foregoing reasons, we are not persuaded by Appellants'
contention that "Examiner has not analyzed the additional elements in the
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claim, and has not explained why the additional elements in combination,
i.e. the claim as a whole, is not significantly more than the exception" (App.
Br. 5; see also id. at 6-7 and 13-14; cf Final Act. 4; Ans. 4--7 and 8-9).
For the foregoing reasons, we are not persuaded by Appellants'
contention that Examiner gave "no weight to the improvement in computing
technology evidenced in the claims" (App. Br. 8; see id. at 8-11; cf Final
Act. 4; Ans. 6-7). Similarly, we are not persuaded by Appellants'
contention that Examiner "erred by ignoring the size and complexity of the
pathway element database and the plurality of elements based on a genome-
scale assay of a biological sample, and the necessity of performing the
claimed method on a processor, as recited in the claims" (App. Br. 13-14; cf
Final Act. 4; Ans. 8-9). See Mayo, 566 U.S. at 84--86 ("simply
implementing a mathematical principle on a physical machine, namely a
computer, [is] not a patentable application of that principle");
For the foregoing reasons, we are not persuaded by Appellants'
contentions that Examiner "erred by ignoring the withdrawal of the rejection
of the claims under 35 USC§ 103" and Examiner's rejection is counter to
legal precedent (App. Br. 11-12 and 15-17; see generally Ans. 7-8).
For the reasons set forth by Examiner, we are not persuaded by
Appellants' contention that Examiner "erred by rejecting claims 2-5, 7 and
10-13 under 35 USC §101 without analysis of the limitation of claims 2-5, 7
and 10-13" (App. Br. 17-18; cf Ans. 10).
CONCLUSION
The evidence of record supports Examiner's finding that Appellants'
claimed invention is directed to patent ineligible subject matter. The
rejection of claims 1-5, 7, and 10-13 under 35 U.S.C. § 101 is affirmed.
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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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