Jose de CorralDownload PDFPatent Trials and Appeals BoardDec 29, 20212020005529 (P.T.A.B. Dec. 29, 2021) Copy Citation 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. 13/702,169 12/05/2012 Jose de Corral 8185.0050 4219 160377 7590 12/29/2021 Kacvinsky Daisak Bluni PLLC (8185) 2601 Weston Parkway Suite 103 Cary, NC 27513 EXAMINER ALKAFAWI, EMAN A ART UNIT PAPER NUMBER 2865 NOTIFICATION DATE DELIVERY MODE 12/29/2021 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): docketing@kdbfirm.com ehysesani@kdbfirm.com mbotnaru@kdbfirm.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOSE DE CORRAL ____________ Appeal 2020-005529 Application 13/702,169 Technology Center 2800 ____________ Before JEFFREY R. SNAY, LILAN REN, and JANE E. INGLESE, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 46–76. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies Waters Technologies Corporation as the real party in interest. Appeal Br. 3. Appeal 2020-005529 Application 13/702,169 2 BACKGROUND The subject matter on appeal relates to analysis of compounds, such as by mass spectrometry. Spec. 1. Claims 46, 52, 58, and 65 are independent and reproduced below. 46. A method for processing data comprising: receiving scans of data generated via sample analysis, each of the scans comprising a set of data elements each associating an ion intensity count with a plurality of dimensions including a retention time dimension and a mass to charge ratio dimension; and detecting one or more peaks in the scans. 52. A method for processing data from sample analysis comprising: receiving one or more spectra generated via a mass spectrometry experiment; and analyzing the one or more spectra to generate a peak list of one or more ion peaks identified in the one or more spectra via performing, in parallel, at least a first filtering step and a second filtering step. 58. An apparatus, comprising: a serial processing unit to: access raw data from a mass analysis system while the raw data is being generated by the mass analysis system, and provide the raw data to at least one memory operably coupled to the serial processing unit; and a parallel processing unit operably coupled to the at least one memory to, while the raw data is being provided to the at least one memory, perform at least one parallel data processing function on the raw data in parallel to generate a peak list. 65. A method, comprising: providing a serial processing unit to: Appeal 2020-005529 Application 13/702,169 3 access scans of data from a mass analysis system while the scans are being generated by the mass analysis system, and provide the scans to at least one memory operably coupled to the serial processing unit; and providing a parallel processing unit operably coupled to the at least one memory to, while the scans are being provided to the at least one memory, perform at least one parallel data processing function on the scans in parallel to generate a peak list. Appeal Br. 19–22 (Claims Appendix). Each remaining claim on appeal depends from claim 46, 52, 58, or 65. REJECTIONS I. Claim 46 stands rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. II. Claims 53 and 55 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. III. Claims 46, 48, 53, and 56 stand rejected under 35 U.S.C. § 102(b) as anticipated by Gorenstein.2 IV. Claims 47, 49–52, 54, 57–59, 61–66, and 68–76 stand rejected under 35 U.S.C. § 102(b) as anticipated by Gorenstein or, alternatively, under 35 U.S.C. § 103(a) as unpatentable over Gorenstein and Cameron.3 V. Claim 55 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Gorenstein, Cameron, and Webb.4 2 US 2009/0294645 A1, published December 3, 2009. 3 US 2005/0253061 A1, published November 17, 2005. 4 US 2010/0332953 A1, published December 30, 2010. Appeal 2020-005529 Application 13/702,169 4 VI. Claims 60 and 67 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Gorenstein, Cameron, and Satulovsky.5 DISCUSSION Rejection I: ineligibility under 35 U.S.C. § 101 The Examiner rejects claim 46 under 35 U.S.C. § 101 as being directed to a judicial exception—namely, an abstract idea without significantly more. Final Act. 2. 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. Alice, 573 U.S. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept 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. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). 5 US 2010/0288918 A1, published November 18, 2010. Appeal 2020-005529 Application 13/702,169 5 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, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); 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 187; see also id. at 191 (“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 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 turn to the second step of the Alice and Mayo framework, where “we must examine the Appeal 2020-005529 Application 13/702,169 6 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 PTO published revised guidance on the application of § 101. See Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”), as updated in October 2019. Under Step 1 of the Guidance, we determine whether the claimed subject matter falls within the four statutory categories: process, machine, manufacture, or composition of matter. Step 2A of the Guidance is two-pronged, under which we look to whether the claim recites: (1) any judicial exception, 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) (9th ed. Rev. 10.2019, rev. June 2020)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then, under Step 2B, look to whether the claim adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or simply appends well-understood, routine, Appeal 2020-005529 Application 13/702,169 7 conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance. We have considered the Examiner’s findings and the Appellant’s arguments in light of the controlling caselaw and Guidance, and are not persuaded the Examiner erred in rejecting the claims under 35 U.S.C. § 101. Guidance Step 1 There is no dispute that claim 46 is within a statutory category. Claim 46 recites a method. Guidance Step 2A, Prong 1 Under Step 2A of the Guidance, we first consider whether the Examiner erred in determining that the claim recites a judicial exception. The Examiner determined that claim 46 recites an abstract idea. Final Act. 2–3. For the reasons explained below, we see no error in that determination. The Guidance identifies mental processes as one of the enumerated groupings of abstract ideas. Guidance, 84 Fed. Reg. at 52. A claim recites a mental process when it encompasses acts a human can perform using the human’s mind or pen and paper. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–3 (Fed. Cir. 2011) (determining that a claim whose “steps can be performed in the human mind, or by a human using a pen and paper” is directed to an unpatentable mental process). This is true even if the claim recites use of a generic computer component to perform the process steps. See, e.g., Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims Appeal 2020-005529 Application 13/702,169 8 that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.”); see also Guidance, 84 Fed. Reg. at 52 n.14 (emphasis omitted) (“If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental process category unless the claim cannot practically be performed in the mind.”). In this case, claim 46 recites “detecting one or more peaks.” The claim does not require any particular machine or device in connection with the above-quoted detecting step. A person could perform the step entirely in the mind by mentally viewing printed data scans. See, e.g., Spec. 97 (“[T]he peak list may be a list or table of data.”). Thus, in the context of claim 46, the step of “detecting” can reside solely within a human thought process. Accordingly, we conclude that claim 1 recites a mental process, which is identified in the Guidance as an abstract idea. Guidance Step 2A, Prong 2 Having determined that the claims recite a judicial exception, our analysis under the Guidance turns to determining whether there are additional elements that integrate the exception into a practical application. See MPEP § 2106.05(a)–(c), (e)–(h). The additional element in claim 46 is “detecting one or more peaks in the scans.” We determine that claim 46 does not recite additional elements that integrate the judicial exception into a practical application. The recited “receiving” step involves obtaining data recited at a high level of generality. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. Appeal 2020-005529 Application 13/702,169 9 2016); see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“As many cases make clear, even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” (quoting Elec. Power Grp., 830 F.3d at 1353, 1355 (citing cases)). In this case, the recited receiving step merely constitutes receiving data scans. Receiving data scans also can be performed in a person’s mind, such as by viewing printed scans. As such, the receiving step also does not “‘transform the nature of the claim’ into a patent-eligible application.” See Alice, 573 U.S. at 217; see also Guidance 84 Fed. Reg. at 55 n.24 (“USPTO guidance uses the term ‘additional elements’ to refer to claim features, limitations, and/or steps that are recited in the claim beyond the identified judicial exception.”) (some emphasis omitted). Appellant argues claim 46 could not be performed as a mental process because the detected peaks are from scans “in the form of data elements associating an ion intensity count with a plurality of dimensions, including a retention time dimension and a mass to charge ratio dimension.” Appeal Br. 15–16. Appellant does not persuasively argue why the step of receiving such data scans could not be performed merely by viewing them. Appellant also argues that the claims are not directed to an abstract idea because the focus of the subject claims is on improving the technology of processing analytical data generated via sample analysis. Appeal Br. 16– 17 (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). The claims at issue in McRO were “directed to the creation of something physical—namely, the display of ‘lip synchronization and facial expressions’ of animated characters on screens.” SAP Am., 898 F.3d Appeal 2020-005529 Application 13/702,169 10 at 1167 (citing McRO, 837 F.3d at 1313). Here, the focus of the claims is not an improvement in the creation of something physical but purportedly an improvement in the abstract idea of identifying peaks in data scans. Although claim 46 recites a “method for processing data,” Appellant does not explain how the claim requires anything more than observing data and identifying data peaks. Such steps involving observation and comparison of values can be performed in a person’s mind and, therefore, does not “‘transform the nature of the claim’ into a patent-eligible application.” See Alice, 573 U.S. at 217; see also Guidance, 84 Fed. Reg. at 55 n.24. “[M]erely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract.” Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016). We are not persuaded that the claimed method effects an improvement in computer-technology or any other technology or technical field. See MPEP § 2106.05(a). Nor does the claimed method apply the judicial exception using any particular machine. See MPEP § 2106.05(b). Claim 46 lacks any recitation to a particular machine or apparatus. Appellant does not purport that the claim adds any other meaningful (technological) limitation, i.e., limitations beyond linking the use of the abstract idea to generic technology. See MPEP § 2106.05(c), (e); see also id. at (f)–(h) (mere instruction to apply a judicial exception (f), insignificant extra-solution activity (g), and generally indicating a field of use or technological environment in which to apply a judicial exception (h), are insufficient to integrate an abstract idea into a practical application). Appeal 2020-005529 Application 13/702,169 11 For the foregoing reasons, we determine that claim 1 does not integrate the judicial exception into a practical application. Guidance Step 2B In Alice step two, we consider the elements of the claim, both individually and as an ordered combination, to assess whether the additional elements transform the nature of the claim into patent-eligible subject matter. Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). “To save a patent at step two, an inventive concept must be evident in the claims.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017). “An inventive concept that transforms the abstract idea into a patent-eligible invention must be significantly more than the abstract idea itself, and cannot simply be an instruction to implement or apply the abstract idea on a computer.” BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). According to the Guidance, “simply append[ing] well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality,” indicates that an inventive concept is absent. Guidance, 84 Fed. Reg. at 56. In this context, we also look to see if the additional elements are more than “well-understood, routine, and conventional” so as to amount to an inventive concept. Conversely, we consider whether these additional elements simply append “well-understood, routine, and conventional” elements, particularly at a high level of generality, to the judicial exception. Appellant does not point to evidence of record that would tend to show that the step of “detecting” in claim 46 is more than well-understood, Appeal 2020-005529 Application 13/702,169 12 routine, and conventional. To the contrary, the Specification acknowledges “peaks in the raw data may be identified and may be output in a list.” Spec. 97. Figure 5 of the Specification, characterized as “a flow chart for a method for processing data according to an embodiment of the present invention” (Spec. 12), identifies step 508 merely as “DETECT PEAKS.” For the foregoing reasons, we determine that the additional elements recited in claim 1 do not amount to significantly more than the abstract idea itself. For the reasons discussed above and by the Examiner, we are not persuaded of reversible error in the Examiner’s rejection of claim 46. Accordingly, the rejection under 35 U.S.C. § 101 is sustained. Rejection II: indefiniteness under 35 U.S.C. § 112 The Examiner rejects claims 53 and 55 under 35 U.S.C. § 112, second paragraph, as indefinite. The Examiner finds the phrases “the first filtering” and “the second filtering” recited in each of these claims lack antecedent basis in the claims. Appellant argues one of ordinary skill in the art would understand the meaning of the recited first and second filtering steps when viewed in light of the Specification. Appeal Br. 14. Appellant’s argument does not address the basis of the Examiner’s rejection. Each of claims 53 and 55 directly depends from claim 46, which does not refer to either a first or a second filtering. As such, the phrases “the first filtering” and “the second filtering” in claims 53 and 55 lack antecedent basis and, therefore, ambiguously refer back to particular first and second filterings that are not previously identified. Appeal 2020-005529 Application 13/702,169 13 The rejections under 35 U.S.C. § 112 are sustained. Rejection III: anticipation under 35 U.S.C. § 102(b) The Examiner rejects each of claims 46, 48, 53, and 56 as anticipated by Gorenstein. Appellant argues only claim 46. See Appeal Br. 13–14. Claims 48 and 56 stand or fall with claim 46. We address claim 53 separately below. Appellant argues “the system of Gorenstein does not receive, generate, or otherwise process data in which each scan of data includes an ion intensity count associated with a retention time dimension and a mass to charge ratio dimension.” Appeal Br. 13. The Examiner finds Gorenstein describes receiving data scans which include information identified in Gorenstein as ion intensity bin, which the Examiner finds is encompassed by the recited ion intensity count. Final Act. 4. The Examiner also finds Gorenstein’s data scans include information identified as m/z ratio, which the Examiner finds represent the recited mass to charge ratio and retention time dimension. Id. The Examiner reiterates these findings in the Answer. Ans. 19. Appellant does not present argument that addresses the Examiner’s findings.6 As such, Appellant’s statement that the above-mentioned features are not described by Gorenstein are not persuasive of error in the Examiner’s rejection and articulated findings on which the rejection is based. The rejection of claims 46, 48, and 56 under 35 U.S.C. § 102(b) is sustained. 6 No Reply Brief has been received. Appeal 2020-005529 Application 13/702,169 14 Claim 53 Because we have sustained the Examiner’s indefiniteness rejections, we reverse, pro forma, the Examiner’s anticipation rejection as applied to claim 53. See In re Steele, 305 F.2d 859 (CCPA 1962). Rejection IV: anticipation/obviousness The Examiner rejects each of claims 47, 49–52, 54, 57–59, 61–66, and 68–76 as anticipated by Gorenstein or, in the alternative, obvious over Gorenstein and Cameron. With regard to each rejected claim, and relevant to Appellant’s arguments on appeal, the Examiner finds Gorenstein discloses receiving mass spectrometry spectra data from a mass spectrometer, storing the received data to a memory, and processing rank-1 and rank-2 filter techniques to generate a convolution matrix of the filtered data. Final Act. 6–11. The Examiner finds that Gorenstein discloses parallel processing in that data convolution is disclosed as being performed at the same time spectra data is being acquired. Id. at 7. Alternatively, the Examiner finds Cameron teaches improving mass spectrometry analysis by performing multiple parallel scans of a sample under different process conditions, and that one of ordinary skill would have found it obvious to apply such parallel scans in Gorenstein for the same purpose. Id. at 7–8. Claims 52, 58, and 65 Appellant presents essentially the same arguments with regard to each of claims 52, 58, and 65. Appellant contends Gorenstein’s teaching of data processing in real time, meaning the filtering processes are performed simultaneously with the mass spectra data acquisition, is not the same as Appeal 2020-005529 Application 13/702,169 15 parallel processing. E.g. Appeal Br. 12 (“[P]erforming functions using real- time data does not equate to parallel processing.”). Claim 52 recites receiving one or more mass spectrometry spectra and “performing, in parallel, at least a first filtering step and a second filtering step.” Each of claims 58 and 65 recites “a parallel processing unit.” Appellant does not propose a definition for the term “parallel.” In the Specification, the term is used to describe processes occurring at the same time. Spec. 96 (distinguishing serial processing as executing one instruction at a time from parallel processing as executing multiple instructions at a time). The Examiner’s interpretation of the term parallel in the claims is consistent with the above-mentioned use of the term in the Specification. Appellant does not dispute the Examiner’s finding that Gorenstein discloses performing data acquisition and data filtering analyses in real time, i.e., at the same time. As such, Appellant does not persuade us of error in the Examiner’s finding that Gorenstein discloses data acquisition and data filtering performed in parallel. With regard to the Examiner’s alternative rejection based on the combined teachings of Gorenstein and Cameron, Appellant argues Cameron’s teaching of parallel sample processing using multiple instruments is not the same as parallel data processing. E.g. Appeal Br. 13. However, Appellant does not persuasively show that any of the rejected claims precludes the recited parallel processes from being performed using multiple instruments at the same time. In light of our above-noted interpretation of the term “parallel” in the claims, Appellant’s argument is not persuasive of reversible error. Appeal 2020-005529 Application 13/702,169 16 For the foregoing reasons, the Examiner’s rejection of claims 52, 58, and 65 is sustained. Appellant does not separately argue any of claims 47, 49–51, 54, 57, 59, 61–64, 66, and 68–76. Accordingly, the Examiner’s rejection as applied to each of these claims also is sustained. Rejection V: Claim 55 Because we have sustained the Examiner’s indefiniteness rejections, we reverse, pro forma, the Examiner’s obviousness rejection as applied to claim 55. See In re Steele, 305 F.2d 859 (CCPA 1962). Rejection VI: Claims 60 and 67 Appellant does not present arguments addressing the Examiner’s rejection of claims 60 and 67. Accordingly, the Examiner’s rejection is sustained. CONCLUSION The Examiner’s decision rejecting claims 46–76 is affirmed. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 46 101 Eligibility 46 53, 55 112 Indefiniteness 53, 55 46, 48, 53, 56 102(b) Gorenstein 46, 48, 56 53 47, 49–52, 54, 57–59, 61–66, 68–76 102(b)/103(a) Gorenstein, Cameron 47, 49–52, 54, 57–59, 61–66, 68– 76 Appeal 2020-005529 Application 13/702,169 17 55 103(a) Gorenstein, Cameron, Webb 55 60, 67 103(a) Gorenstein, Cameron, Satulovsky 60, 67 Overall Outcome 46–76 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)(iv). AFFIRMED Copy with citationCopy as parenthetical citation