Robert Bosch GmbH

Patent Trials and Appeals Board

May 26, 2021

2020004751 (P.T.A.B. May. 26, 2021)

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.
14/173,461 02/05/2014 Sam Kavusi 1576-0638CNT1 1259
10800 7590 05/26/2021
Maginot, Moore & Beck LLP
One Indiana Square, Suite 2200
Indianapolis, IN 46204
EXAMINER
MARCSISIN, ELLEN JEAN
ART UNIT PAPER NUMBER
1641
MAIL DATE DELIVERY MODE
05/26/2021 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 SAM KAVUSI, MICHAELA LAUPHEIMER, and
CHRISTOPH LANG1
Appeal 2020-004751
Application 14/173,461
Technology Center 1600
Before ERIC B. GRIMES, ROBERT A. POLLOCK, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
GRIMES, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method of quantitating a molecule of interest, which have been rejected as
being directed to patent ineligible subject matter. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 Appellant identifies the real party in interest as Robert Bosch GmbH.
Appeal Br. 2. We use the word “Appellant” to refer to “applicant” as defined
in 37 C.F.R. § 1.42.
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STATEMENT OF THE CASE
The “invention relates to diagnostic tests and more specifically to
affinity based diagnostic tests.” Spec. ¶ 1. Such tests include ELISA plates
and microarrays, the quality of which can be assessed using “Limit of
Quantitation (LoQ) analysis.” Id. ¶¶ 4, 6.
“The LoQ metric includes both an upper limit and a lower limit,”
which “are the highest and lowest concentrations, respectively, that can be
quantitatively measured within an acceptable total error for the particular
assay.” Id. ¶ 7. “The range of concentrations between the lower LoQ and the
upper LoQ for a particular assay is the dynamic range of the assay.” Id. ¶ 8.
“Given a particular concentration of affinity probe molecules, the
normalized signal obtained from a particular assay does not vary linearly
with the concentration of the analyte of interest,” but instead follows an
S-shaped “response curve,” which “is a curve showing the relationship
between various concentrations of a molecule of interest in a plurality of
samples and a plurality of quantitation signals obtained from the plurality of
samples for a particular assay.” Id. ¶ 9. A typical response curve provides a
dynamic range covering concentrations varying by “about two orders of
magnitude.” Id.
The Specification discloses a method in which “environment control
equipment 114 is configured to establish and maintain environmental
conditions, in this example, within a microarray 120.” Id. ¶ 33. “[T]he
environment within each of the selected set of test sites 124 is controlled to
establish, within each of the selected set of test sites 124, a different test
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environment.” Id. ¶ 39. As a result, each of the test sites is associated with a
different response curve. Id. ¶¶ 33, 37.
The Specification states that “a combined response curve” is
generated “when the response curves for two sites with different test
environments are summed.” Id. ¶ 25. “Thus, quantitation of samples within
the concentration range of interest, which extends from the minimum
concentration 182 to the maximum concentration 184, is possible by
summing the signals obtained from the test sites 124 associated with the
response curves 186 and 192.” Id. ¶ 46 (referring to Fig. 8). The combined
response curve extends the dynamic range of analyte concentrations that can
be assayed using a single microarray. Id. ¶¶ 16–17, Fig. 8.
Claims 1–6, 9, 10, and 12–17 are on appeal. Claim 1,2 reproduced
below, is illustrative:
1. A method of quantitating the concentration of a molecule
of interest by extending the dynamic range of an array,
comprising:
establishing a first test environment at a first test site of
an array and a second test environment at a second test site of
the array using an environment control device, each of the first
and second test environments (i) including at least one first
probe molecule which is identical to a probe molecule provided
in the other of the first and second test environments, and (ii)
associated with one of a plurality of response curves, each of
the plurality of response curves different from the other of the
plurality of response curves;
identifying, for each of the first and second test sites, the
associated one of the plurality of response curves, wherein each

2 The claim language reproduced above includes Appellant’s amendment
filed Dec. 17, 2019, which was entered by the Examiner. See Adv. Action
mailed Dec. 31, 2019.
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of the identified associated response curves is different from the
other of the identified associated response curves;
storing a combined response curve resulting from a
summation of the identified associated response curves;
exposing each of the first and second of test sites to a
sample having a concentration of the molecule of interest such
that the concentration of the molecule of interest is the same at
each of the first and second test sites;
binding a first number of the molecules of interest from
the sample at the first test site while the first test site is
established at the first test environment;
binding a second number of the molecules of interest
from the sample at the second test site while the second test site
is established at the second test environment, the second
number different from the first number;
obtaining a first quantitation signal associated with the
bound first number of molecules of interest using a label reader;
obtaining a second quantitation signal associated with the
bound second number of molecules of interest using a label
reader;
summing the first and second quantitation signals;
associating the summation of the first and second
quantitation signals with the stored combined response curve;
and
determining the concentration of the molecule of interest
in the sample based upon the association.

Claim 12 is the other independent claim and is directed to the same
method defined in claim 1, using slightly different claim language.
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OPINION
Claims 1–6, 9, 10, and 12–17 stand rejected under 35 U.S.C. § 101 on
the basis that “the claimed invention . . . is directed to abstract ideas without
significantly more.” Ans. 3. The Examiner finds that “the steps of
identifying, associating, and determining are mental processes, namely
concepts performed in the human mind.” Id. at 4. The Examiner also finds
that the “steps of storing a combined response curve and obtaining a first and
a second quantification signal, summing the signals are each abstract ideas
as they are directed to mathematical concepts.” Id. at 4–5. Finally, the
Examiner finds that, “[r]egarding the first step, the ‘establishing’ step . . . the
limitation ‘associated with one of plurality of response curves’ amounts to
associating each test site with a response curve . . . , which is an abstract
idea, as it is considered a mental process.” Id. at 5.
The Examiner finds that “[t]hese judicial exceptions are not integrated
into a practical application” because, first, “[t]he step of ‘establishing a
respective test environment’ at each of the first and second test sites is
recited at a high level of generality,” and “‘an environment control device’
could be any generic component, including for example any device that
would control environment.” Id. at 5. In addition, the Examiner finds that
both the “establishing” and “exposing” steps are “mere data gathering.”
Id. at 6. The Examiner finds that “[t]hese active wet method steps fail to
indicate integration into practical application; for example, there is no
indication that these steps improve the functioning of a computer or other
technology,” etc. Id.
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Finally, the Examiner finds that “[t]he claim(s) do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because the additionally recited active method step
(exposing the plurality of test sites to a sample having concentration of the
molecule of interest) is mere insignificant extra solution activity.” Id. The
Examiner also finds that the “exposing” step “is also not performed in an
unconventional way, and as such fails to provide an ‘inventive concept’ that
could render the claim patent eligible under 35 U.S.C. 101.” Id. at 6–7
(citing Dufva3 as “teach[ing] establishing multiple respective test
environments at a plurality of test sites”).
The Examiner also finds that the “label reader” recited in the claims is
“routine and conventional in the art.” Id. at 7 (citing Dufva’s disclosure of a
“means for detecting signal”). The Examiner concludes that “when
considered both individually and as an ordered combination, the additional
elements fail to amount to significantly more than the abstract ideas.” Id.
Appellant argues, among other things, that the claimed method is
an improved affinity based technological process for
quantitating a concentration of a molecule of interest using a
single sample and a single probe molecule that varies the
manner in which affinity data is generated so that a single probe
molecule can provide an extended dynamic range for the
affinity based technological process for quantitating a
concentration of a molecule of interest in a single sample.
Appeal Br. 22.

3 Dufva et al., US 2010/0190265 A1, published July 29, 2010.
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Principles of Law
A. Section 101
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 U.S. 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 Court’s two-part 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, 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.”).
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
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(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 (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
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 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. (citation omitted)
(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
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. “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.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
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requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”).4 “All USPTO personnel are, as a matter of internal
agency management, expected to follow the guidance.” Id. at 51; see also
October 2019 Update at 1.
Under the Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5

4 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the Revised Guidance. USPTO,
October 2019 Update: Subject Matter Eligibility (the “October 2019
Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
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Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is 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.
Revised Guidance, 84 Fed. Reg. at 52–56.
Revised Guidance Step 2A, Prong 1
Following the Revised Guidance, we first consider whether the claims
recite a judicial exception. The Revised Guidance identifies three groupings
of subject matter included in the abstract idea exception, including “[m]ental
processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion).” 84 Fed. Reg. at 52.
Claim 1 recites the steps of:
associating the summation of the first and second
quantitation signals with the stored combined response curve;
and
determining the concentration of the molecule of interest in the
sample based upon the association.

practical application. See Revised Guidance — Section III(A)(2), 84 Fed.
Reg. 54–55.
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We agree with the Examiner that these steps encompass abstract ideas
in the category of mental processes. With regard to the “associating” step,
the Specification states, with reference to Figure 8, that
quantitation of samples within the concentration range of
interest, which extends from the minimum concentration 182 to
the maximum concentration 184, is possible by summing the
signals obtained from the test sites 124 associated with the
response curves 186 and 192. The concentration associated with
the combined signal is obtained using the response curve 180,
which is a summation of the response curves 186 and 192.
Spec. ¶ 46.
In other words, the signals from the two test sites are added together,
and the combined signal is plotted on the combined response curve, which
determines the concentration of the molecule of interest. These steps can be
done in the human mind or with pen and paper, and therefore amount to an
abstract idea in the category of mental processes.
However, we do not agree with the Examiner that claim 1 recites a
mathematical concept. Ans. 4–5. While “summing the first and second
quantitation signals” undoubtedly involves mathematics, “[a] claim does not
recite a mathematical concept (i.e., the claim limitations do not fall within
the mathematical concept grouping), if it is only based on or involves a
mathematical concept.” October 2019 Update at 3. Neither claim 1 nor claim
12 expressly recites “mathematical relationships, mathematical formulas or
equations, [or] mathematical calculations.” Revised Guidance, 84 Fed. Reg.
at 52.
In summary, the last two steps of claim 1 can practically be performed
in the human mind, and therefore recite an abstract idea in the category of
mental processes.
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Revised Guidance Step 2A, Prong 2
Although claim 1 recites an abstract idea, it would still be patent-
eligible if “the claim as a whole integrates the recited judicial exception into
a practical application of the exception.” Revised Guidance, 84 Fed. Reg. at
54. The analysis of whether a claim integrates a judicial exception into a
practical application includes “[i]dentifying whether there are any additional
elements recited in the claim beyond the judicial exception(s)” and
“evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.”
Id. at 54–55.
One of the exemplary considerations indicating that an additional
element may integrate an exception into a practical application is “[a]n
additional element [that] reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field.” Id.
at 55.
Here, claim 1 as a whole integrates the recited abstract idea (mental
processes) into a practical application. In addition to the final two steps that
can practically be performed in the human mind, claim 1 recites steps of (a)
establishing first and second test sites on an array, where both sites include
the same probe molecule but are associated with different response curves,
(b) summing the two response curves and storing the combined response
curve, (c) exposing the test sites to the molecule of interest to bind differing
first and second numbers of molecules at the two test sites, (d) obtaining
quantitation signals associated with the first and second numbers of
molecules, and (e) summing the signals, before carrying out the mental step
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of (f) associating the summed signal with the combined response curve to
determine the concentration of the molecule of interest in the sample.
Appellant’s Specification states that “[t]he dynamic range of a typical
assay is generally between 1 to 3 orders of magnitude,” and “[t]he dynamic
range of a particular assay limits the usefulness of the assay in applications
wherein the expected variation in tested samples is several orders of
magnitude.” Spec. ¶¶ 9–10. More specifically, “the expression range for
many biomolecules can span 6 orders of magnitude or more and a convenient
assay should have an equal dynamic range while the dynamic range of a
typical assay is generally between 1 to 3 orders of magnitude.” Id. ¶ 10.
The Specification describes efforts that have been made to increase
the dynamic range of assays but states that each of these approaches has
disadvantages. Id. ¶¶ 12–14. The Specification states that the combined
response curve produced according to the claimed method, as shown in
Figure 8, “extends substantially linearly throughout a concentration range of
interest that is bounded by a minimum concentration 182 and a maximum
concentration 184. The concentration range of interest is larger than the
dynamic range of any single test site 124 for a given test environment.”
Id. ¶ 43.
Thus, quantitation of samples within the concentration range of
interest, which extends from the minimum concentration 182 to
the maximum concentration 184, is possible by summing the
signals obtained from the test sites 124 associated with the
response curves 186 and 192. The concentration associated with
the combined signal is obtained using the response curve 180,
which is a summation of the response curves 186 and 192.
Id. ¶ 46. “Therefore, by carefully controlling the environment at each of a
plurality of test sites 124, a combined output signal may be obtained which
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has a relatively linear relationship to the concentration of a molecule of
interest.” Id. ¶ 47.
The Specification thus describes the claimed method as an
improvement in the technical field of affinity-based assays; specifically, the
claimed method allows accurately quantitating a wider concentration range
of a given analyte using a single array than would be possible using an array
having test sites that are all exposed to the same testing environment.
We therefore agree with Appellant that the claimed method represents
“an improved affinity based technological process for quantitating a
concentration of a molecule of interest using a single sample and a single
probe molecule.” Appeal Br. 22. Thus, the claimed method, as a whole, is
not “directed to . . . [a] patent-ineligible concept.” Alice, 573 U.S. at 217.
The same analysis applies to independent claim 12, and therefore also to
dependent claims 2–6, 9, 10, and 13–17.
The Examiner reasons that
it appears that the improvement is in the abstract idea itself, not
a practical application thereof. As such, while an improvement
to existing process may be patent eligible, the improvement
cannot be the judicial exception itself. Therefore, as indicated in
the rejection, it is maintained that the additionally recited claim
elements fail to amount to an improvement, such that would
render the claims eligible by way of practical application of the
judicial exception(s).
Ans. 20.
We do not agree that the physical steps of establishing test
environments, identifying response curves, exposing test sites to a sample,
binding molecules of interest at the test sites, and obtaining quantitation
signals are part of any abstract idea. These steps cannot be done in the
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human mind, they are not mathematical processes, and they are not methods
of organizing human activity. They therefore do not fall into any of the
categories of abstract ideas that are set out in the Revised Guidance. We
agree, instead, with Appellant that the recited steps represent an
improvement to the technical process involved in affinity-based assays.
The Examiner also reasons that
the evidentiary reference [Dufva] supports the position as set
forth in the rejection that the active method steps (the wet assay
steps, i.e., the limitations recited in addition to the abstract
ideas) were steps that amount to well-known, routine and
conventional steps performed by those of skill in the art at the
time.
Ans. 16.
However, the analysis under Step 2A, prong 2, “specifically excludes
consideration of whether the additional elements represent well-understood,
routine, conventional activity.” Revised Guidance, 84 Fed. Reg. at 55. And
[a] claim that integrates a judicial exception into a practical
application will apply, rely on, or use 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. When the
exception is so integrated, then the claim is not directed to a
judicial exception . . . and is eligible. This concludes the
eligibility analysis.
Id. at 54.
In summary, we reverse the rejection of independent claims 1 and 12
under 35 U.S.C. § 101. Claims 2–6, 9, 10, and 13–17 depend from claim 1
or claim 12, and we therefore reverse the rejection of these claims as well,
for the reasons discussed above.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 9, 10,
12–17
101 Eligibility 1–6, 9, 10,
12–17

REVERSED