W. Knox. Carey et al.

Patent Trials and Appeals Board

Sep 26, 2019

13654349 - (D) (P.T.A.B. Sep. 26, 2019)

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.
13/654,349 10/17/2012 W. Knox Carey 07451.0080-00000 1378
22852 7590 09/26/2019
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
TIEDEMAN, JASON S
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/26/2019 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte W. KNOX CAREY, DAVID P. MAHER,
MICHAEL G. MANENTE, JARL NILSSON,
and TALAL G. SHAMOON

Appeal 2017-011682
Application 13/654,349
Technology Center 3600

Before ERIC B. CHEN, NABEEL U. KHAN, and PHILLIP A. BENNETT,
Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Intertrust Technologies
Corporation, appeals from the Examiner’s decision to reject claims 22, 24–
32, 38, and 40–52. Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “Applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Intertrust Technologies Corporation. App. Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to systems and methods for protecting and
governing genomic and other information. Claim 22, reproduced below, is
illustrative of the claimed subject matter:
22. A trusted data analysis platform for performing
computations on genomic data comprising:
a processor and a memory containing instructions that
when executed by the processor cause a trusted data analysis
platform including a plurality of virtual diagnostic tests to
perform operations comprising:
receiving, from a requestor system, a request to execute a
virtual diagnostic test on the trusted data analysis platform, the
virtual diagnostic test comprising a test algorithm for testing
genomic data, an input specification governing types and/or
characteristics of data input to the virtual diagnostic test, and a
set of one or more digital signatures;
identifying, by the trusted data analysis platform, at least
one sequence data object based on the request;
verifying an authorization of the virtual diagnostic test to
access the at least one sequence data object according to
permissions associated with the at least one sequence data object
and determining that the at least one sequence data object
satisfies the input specification;
authenticating the virtual diagnostic test using at least one
digital signature from the set of one or more digital signatures;
executing the test algorithm, by the trusted data analysis
platform in a secure execution environment, using the at least one
sequence data object, to generate a test algorithm output; and
providing, to the requestor system, the test algorithm
output.
App. Br. 25–26 (Claims Appendix).

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REJECTION
Claims 22, 24–32, 38, and 40–52 stand rejected under 35 U.S.C. § 101
as being directed to a judicial exception without significantly more. Final
Act. 3–6.
ANALYSIS
Legal Standard
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Supreme Court
instructs us to “[f]irst . . . determine whether the claims at issue are directed
to [a] . . . patent-ineligible concept[]” (id. at 217), and, in this case, the
inquiry centers on whether the claims are directed to an abstract idea. If the
initial threshold is met, we then move to the second step, in which we
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
The Supreme Court describes the second step 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, 573 U.S. at 217–18 (quoting
Mayo, 566 U.S. at 72–73).
The USPTO has published revised guidance on the application of
§ 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first
look to whether the claim recites:
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(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) (Guidance, Step 2A, prong 1); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev. 08.2017, 2018))
(Guidance, Step 2A, prong 2).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look 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.
Guidance (Step 2B).
Examiner’s Findings and Conclusion
In the first step of the Alice inquiry, the Examiner determines “the
claims are directed to an abstract idea because an abstract idea is recited in
the claims.” Final Act. 3. The Examiner further finds the “receiving,”
“identifying,” “verifying,” and “performing” steps in claim 22 recite an
abstract idea, reasoning that “[p]erforming computations on genomic data is
an abstract because it is analogous to the court-defined abstract idea in
SmartGene [Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950 (Fed.
Cir. 2014)].” Final Act. 3–4.
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In the second step of the Alice inquiry, the Examiner determines the
claims do not amount to significantly more than the abstract idea because:
When viewed as a whole, the claims do not include additional
limitations that are sufficient to amount to significantly more
than the judicial exception because the claims recite processes
that are routine and well-understood in the art of healthcare
communication systems and simply implement the process or
processes on a computer(s), which is not enough to qualify as
“significantly more” as described herein. Specifically, the
applicant is taking the well-understood process of performing
computations on genomic data, which does not qualify as
significantly more. The claims do not include additional
limitations that are sufficient to amount to significantly more
than the judicial exception because the additional limitations of
receiving and providing data to a requestor system merely
represent insignificant, conventional extra-solution activities
well-understood in the industry of healthcare communication
systems.
Final Act. 4. The Examiner further determines that additional elements
recited in the claims amount to no more than generic computer structures for
performing generic computer operations and functions well-understood,
routine, and conventional in the industry. Final Act. 5.
Appellant’s Contentions
Appellant presents several arguments in favor of eligibility. First,
Appellant argues the claims are not directed to an abstract idea because “the
pending claims are factually and legally distinct from those of SmartGene.”
App. Br. 10. More specifically, Appellant contends “SmartGene concerned
factually dissimilar subject matter, ‘selection of a therapeutic treatment
regimen’ versus a ‘trusted data analysis platform.’” App. Br. 11. Appellant
further argues the claims in SmartGene differ from the pending claims in
that the SmartGene claims sought to claim a result without reciting detail
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about how the result is accomplished. Id. Appellant asserts that in contrast
to the claims in SmartGene, the “independent claims recite a ‘trusted data
analysis platform’ and two particular data structures, a ‘virtual diagnostic
test’ and a ‘sequence data object.’” App. Br. 12.
Appellant also argues the claims pass muster under Alice step 2
because the claims improve a computer-related technology. App. Br. 13.
More specifically, Appellants assert that the claims “encompass a specific
‘trusted data analysis platform’” and that this platform “is designed to allow
programs, rather than human analysts, access to genetic data.” Id.
Appellants argue that using the claimed invention, “a patient’s genome is
sequenced once and then securely stored, rather than sequenced for every
genomic test.” Id. (citing Spec. ¶¶ 43–45, Figs. 1A-1C). Appellants also
argue the claims address additional technical issues relating to data access
and error detection “by packaging the programs into virtual diagnostic tests
together with digital signatures and input specifications.” App. Br. 14.
Guidance, Step 2A, Prong One 2
The Judicial Exception
Applying the Guidance, we are persuaded of Examiner error. The
Guidance instructs us first to determine whether any judicial exception to
patent eligibility is recited in the claim. The guidance identifies three
judicially-excepted groupings: (1) mathematical concepts, (2) certain
methods of organizing human activity such as fundamental economic
practices, fundamental economic principles or practices, commercial or legal

2 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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interactions, and managing personal behavior or relationships or interactions
between people, and (3) mental processes. We conclude that claim 22 does
not recite any of these three groupings.
The preamble of claim 22 recites “[a] trusted data analysis platform
for performing computations on genomic data comprising.” The subject
matter encompassed by the preamble plainly does not include a
mathematical concept or mental process. Nor does it recite any fundamental
economic practice or other method of organizing human activity. Rather, we
view the recited “trusted data analysis platform” as a collection of computer
systems which are used in analyzing genomic data. This type of
functionality does not manage interactions between people, nor does it have
a primarily economic purpose. Instead, the trusted data analysis platform
focuses on analyzing genomic data in a secure and reliable way.
Accordingly, the preamble of claim 1 does not recite an abstract idea within
the grouping identified in the Guidance.
The body of the claim recites additional limitations that specify the
structural components of the trusted data analysis platform, as well as the
operations they perform in analyzing genomic data. These limitations
include (a) “a processor and a memory containing instructions that when
executed by the processor cause a trusted data analysis platform including a
plurality of virtual diagnostic tests to perform operations,” (b) “receiving,
from a requester system, a request to execute a virtual diagnostic test on the
trusted data analysis platform, the virtual diagnostic test comprising a test
algorithm for testing genomic data, an input specification governing types
and/or characteristics of data input to the virtual diagnostic tests, and a set of
one or more digital signatures,” (c) “identifying, by the trusted data analysis
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platform, at least one sequence data object based on the request,”
(d) “verifying an authorization of the virtual diagnostic test to access the at
least one sequence data object according to permissions associated with the
at least one sequence data object and determining that the at least one
sequence data object satisfies the input specification,” (e) “authenticating the
virtual diagnostic test using at least one digital signature from the set of one
or more digital signatures,” (f) “executing the test algorithm, by the trusted
data analysis platform in a secure execution environment, using the at least
one sequence data object, to generate a test algorithm output,” and
(g) “providing, to the requester system, the test algorithm output.” None of
these limitations recite an abstract idea.
As with the preamble above, it is readily apparent that none of these
limitations recites any mathematical concept, as they each recite a structural
and/or functional component of the claimed trusted data analysis platform
along with the operations they perform. Nor can these limitations be
reasonably characterized as “methods of organizing human activity such as
fundamental economic practices or managing personal behavior or
relationships or interactions between people.” Each of these limitations
recites computer hardware and associated functionality used in the analysis
of genomic data. And while the genomic data analyzed is associated with
human beings, the analysis performed by the system does not manage
personal behavior or relationships among people.
Finally, these limitations also cannot be practically performed in the
mind or using pen and paper. For example, limitation (a) recites the specific
computer hardware which is used to implement the genomic analysis.
Limitation (b), which generally recites receiving a request to perform a
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diagnostic test, is not reasonably characterized as a mental step because the
request includes specific information that is not reasonably consumed by a
human with only their mind such as a digital signature. Limitation (c),
which recites identifying a sequence data object based on the request also is
not something that can be reasonably performed by a person in their mind or
using pen and paper because sequence data objects are not typically stored in
a human-readable format.
Limitation (d), which recites “verifying an authorization of the virtual
diagnostic test to access the at least one sequence data object according to
permissions associated with the at least one sequence data object and
determining that the at least one sequence data object satisfies the input
specification” is similarly a computer intensive operation not practically
performed by a human. Limitation (e), which recites authenticating the
virtual diagnostic test using a digital signature, is also not reasonably
performed by a human using their mind or pen and paper, as the generation
and analysis of digital signatures requires the use of a computer processor to
perform. Similarly, limitations (f) and (g), which recite executing the test
algorithm to generate an output and providing the output to “the requester
system” also recite operations that require the use of a computer processor to
perform. A human cannot execute a test algorithm in their mind on a
genomic sample (which, according to the Specification “can produce
approximately 300GB of information per person,”) nor can a human provide
the result to a requester system merely using their mind or pen and paper.
We further observe that the associated description in the specification
makes clear that the functions recited in claim 22 are not practically
performed in the human mind or with pen and paper. Rather, the recited
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operations require specific types of computers configured to perform
specific types of operations. See, e.g., Spec. ¶¶ 255–360.
The Examiner determines the claims are directed to an abstract idea
because of their similarity to the claim found abstract in SmartGene. Final
Act. 4. We agree with Appellant, however, the claim 22 goes well beyond
the concept identified as abstract in SmartGene. The claim in SmartGene
recited “a method for guiding the selection of a therapeutic treatment
regimen for a patient.” SmartGene, 55 Fed. Appx. 950. The method
included providing patient information to a computer and outputting a
ranked listing of available treatments along with patient specific instructions
for those treatments. Id. In concluding the claims were abstract, the Federal
Circuit found that “Claim 1 does no more than call on a ‘computing device,’
with basic functionality for comparing stored and input data and rules, to do
what doctors do routinely” and that “every step is a familiar part of the
conscious process that doctors can and do perform in their heads.” Here,
claim 22 recites limitations such as authenticating digital signatures and
executing genetic testing, for example, which doctors do not routinely
perform in their heads, but instead are always performed on computers.
Aside from the fact that both the subject patent in SmartGene and the claims
at issue involve medical treatment, we discern little similarity between
Appellant’s claim 22 and the claims found impermissibly abstract in
SmartGene.
We conclude, therefore, that Appellant’s claim 22 does not recite an
abstract idea under Step 2A of the Guidance, and we do not sustain the
rejection under 35 U.S.C. § 101.

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DECISION
The Examiner’s rejection under 35 U.S.C. § 101 is reversed.
DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
22, 24–32,
38, 40–52
§ 101 None 22, 24–32,
38, 40–52
REVERSED