Christian A. Le Cocq et al.

Patent Trials and Appeals Board

Oct 25, 2019

14533743 - (D) (P.T.A.B. Oct. 25, 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.
14/533,743 11/05/2014 Christian A. Le Cocq 20140281-01 3213
22878 7590 10/25/2019
Agilent Technologies, Inc.
Global IP Operations
5301 Stevens Creek Blvd
Santa Clara, CA 95051
EXAMINER
WOITACH, JOSEPH T
ART UNIT PAPER NUMBER
1631
NOTIFICATION DATE DELIVERY MODE
10/25/2019 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):
Agilentdocketing@cpaglobal.com
ipopsadmin@agilent.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN A. LE COCQ, MAGNUS ISAKSSON,
ASHUTOSH, and LINUS FORSMARK1
Appeal 2019-004221
Application 14/533,743
Technology Center 1600
Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, 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 relating
to a method of assigning a nucleotide sequence to a genomic location, which
have been rejected as being ineligible for patenting. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellant identifies the real party in interest as Agilent Technologies, Inc.
Appeal Br. 2. We use the word Appellant to refer to “applicant” as defined
in 37 C.F.R. § 1.42(a).
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STATEMENT OF THE CASE
“Target enrichment methods . . . isolate from the sample DNA only
the fragments that match probes designed to target a suite of genomic
regions of interest.” Spec. 1:6–9. “In some cases, the enriched genomic
region may contain a gene that has a mutation that is associated with one or
more cancers.” Id. at 10:12–13. Target enrichment methods are used to
accelerate Next Generation Sequencing (NGS) workflows in diagnostics and
clinical research. Id. at 1:6–7.
“In many cases, the first processing step in extracting diagnostic
information from NGS data is to tag each sequence read (or pair of reads)
with its likely genomic location.” Id. at 1:10–11. “The term ‘sequence reads’
refers to the output of a sequencing run. Sequence reads are represented by a
string of nucleotides.” Id. at 5:15–16.
“General purpose aligners . . . are programs that try to find for each
read (or read pair) the best match across the whole genome.” Id. at 1:12–13.
Such programs “use information provided only by the sequence of each read
and by the whole genome reference data to align the sequences.” Id. at 1:14–
15. Thus, they “do not integrate the target enrichment parameters in the
matching algorithm when sequence reads are obtained from samples
enriched using a target enrichment panel, resulting in longer processing
times and reduced accuracy of tagging.” Id. at 1:16–18.
The Specification discloses “a computer-implemented method for
assigning a sequence read to a genomic location.” Spec. 1:21–22. The
method “may be performed on sequence reads . . . obtained from a sample
enriched by hybridization to a plurality of capture sequences.” Id. at 10:7–8.
Claims 1–20 are on appeal. Claim 1, reproduced below, is illustrative:
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1. A computer-implemented method for assigning a
sequence read to a genomic location, comprising:
a) accessing a file comprising a sequence read, wherein
the sequence read is obtained from a nucleic acid sample that
has been enriched by hybridization to a plurality of capture
sequences; and
b) assigning the sequence read to a genomic location by:
i) identifying a capture sequence as being a match
with the sequence read if the sequence read comprises
one or more subsequences of the capture sequence;
ii) calculating, using a computer, a score indicating
the degree of sequence similarity between each of the
matched capture sequences and the sequence read; and
iii) assigning the sequence read to the genomic
location if the calculated score for a matched capture
sequence is above a threshold.
OPINION
Claims 1–20 stand rejected under 35 U.S.C. § 101 “because the
claimed invention is not directed to patent eligible subject matter.” Ans. 3.
The Examiner finds that claim 1
requires computing similarity scores with the broad steps of
receiving data of a read and comput[ing] a similarity score [to]
determine the location of the read on the reference sequence.
The judicial exception is a set of instructions for analysis of
sequence data and considered to be in the category of Mental
Processes and are concepts that can be performed in the human
mind (including an observation, evaluation, judgment, opinion).
Id. at 4–5.
The Examiner also finds that “[t]he judicial exception recited in claim
1 requires steps recited at high level of generality for accessing and
assigning . . . and would not be found to be a practical application of the
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judicial exception.” Id. at 5. Finally, the Examiner finds that “together the
steps do not appear to result in significantly more than a means to compare
sequences.” Id. “In review of the instant specification the methods do not
appear to require a special type of processor and can be performed on a
general purpose computer.” Id. at 5–6.
The Examiner concludes that “the claims are not considered to recite
something significantly different than a judicial exception and thereby are
not directed to patent eligible subject matter.” Id. at 8.
Appellant argues that “the rejected claims recite a specific set of rules
or steps implementing a ‘process specifically designed to achieve an
improved technological result in a conventional industry.’” Appeal Br. 9,
citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed.
Cir. 2016). Appellant argues that the claimed method
addresses an identified problem with general purpose aligners
used to align sequence data, namely longer processing times
and reduced accuracy of tagging. (See specification, page 1,
lines 14–18). This improvement in the functioning of a
computer in performing the assignment of a sequence read to a
genomic location means the claim is not directed to an abstract
idea.
Reply Br. 5, citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016).
Appellant also argues that the claimed method amounts to
significantly more than an abstract idea because “[t]he steps recited in the
claims are not conventional.” Appeal Br. 10. Rather, Appellant argues, “the
claimed methods employ additional information about the target enrichment
panel used to produce the sequence reads, thereby reducing computing
time.” Reply Br. 8–9.
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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 concluded that “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable under 35 U.S.C. § 101.
See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
To determine if a claim falls into an excluded category, we apply a
two-step 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)). We first determine what 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.”).
Patent-ineligible abstract ideas 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)). In contrast, patent-eligible inventions 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 (1854))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
In Diehr, the claimed method employed a mathematical formula, but
the Supreme Court held that “[a] claim drawn to subject matter otherwise
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statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; 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.”). The
Supreme Court noted, however, 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, and “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 (internal 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 (alterations in original)).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO has published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(January 7, 2019) (“Revised Guidance”). Under that guidance, we first
determine 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); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
See 84 Fed. Reg. at 54–55. Only if a claim (1) recites a judicial exception and
(2) does not integrate that exception into a practical application, do we then
determine whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
a “well-understood, routine, conventional activity” 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.
See 84 Fed. Reg. at 56.
Revised Guidance Step 2(A), Prong 1
Following the Revised Guidance, we first consider whether the claims
recite a judicial exception, such as a mental process. Although claim 1
recites a “computer-implemented” method, and “us[es] a computer” to
calculate a degree of similarity, these recitations by themselves do not
distinguish the steps of the claim from mental processes. If a claim “covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.” 84 Fed. Reg. at 52, n.14. As
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discussed below, the steps of claim 1 can practically be performed in the
mind.
Claim 1 recites “accessing a file comprising a sequence read.” A
sequence read is a string of nucleotides. Spec. 5:5–6. A string of nucleotides
can be printed on paper and accessed by a person reading the string of As,
Gs, Cs, and Ts off the paper. Since step (a) of claim 1 can be performed
simply by observation, it is a mental step. 84 Fed. Reg. at 52 (A mental
process can be “performed in the human mind (including an observation,
evaluation, judgment, opinion).”). See also CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011) (“All of claim 3’s
method steps can be performed in the human mind, or by a human using a
pen and paper. . . . First, step (a) . . . can be performed by a human who
simply reads records of Internet credit card transactions from a preexisting
database.”).
Next, claim 1 recites “identifying a capture sequence as being a match
with the sequence read if the sequence read comprises one or more
subsequences of the capture sequence.” This step requires determining if the
string of nucleotides making up the sequence read includes a subsequence of
a capture sequence. That is, it requires comparing two strings of nucleotides
(a sequence read and a capture sequence) and determining whether part of
one (the capture sequence) is shared by the other (the sequence read). Two
strings of As, Gs, Cs, and Ts can be compared simply by observation;
therefore step (b)(i) of claim 1 is a mental step.
Claim 1 next recites “calculating, using a computer, a score indicating
the degree of sequence similarity between each of the matched capture
sequences and the sequence read.” The Specification expressly states that
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“‘sequence similarity’ or ‘similarity’ in the context of two nucleic acid
sequences makes reference to a specified degree of sequence identity
between two sequences when aligned for maximum correspondence over a
specified comparison window, as measured by sequence comparison
algorithms or by visual inspection.” Spec. 17:6–9 (emphasis added). Thus,
the claim language “covers performance in the mind but for the recitation of
generic computer components,” and the Specification makes clear that it can
“practically be performed in the mind.” 84 Fed. Reg. at 52, n.14. Step (b)(ii)
of claim 1 therefore is a mental step.
Finally, claim 1 recites “assigning the sequence read to the genomic
location if the calculated score for a matched capture sequence is above a
threshold.” This step simply requires observing the similarity score
calculated in step (b)(ii), evaluating whether it is above a threshold score,
and making a judgment to either assign or not assign the sequence read to a
genomic location depending on the score. Step (b)(iii) of claim 1 therefore is
a mental step.
In summary, each of the steps of claim 1 encompasses a “concept[]
performed in the human mind (including an observation, evaluation,
judgment, opinion)”; i.e., a mental process. 84 Fed. Reg. at 52. Thus, we
agree with the Examiner that claim 1 recites an abstract idea.
Revised Guidance Step 2(A), Prong 2
Following the Revised Guidance, we next consider whether “the claim
as a whole integrates the recited judicial exception into a practical
application of the exception”; i.e., whether the claim “appl[ies], rel[ies] on,
or use[s] the judicial exception in a manner that imposes a meaningful limit
on the judicial exception.” 84 Fed. Reg. at 54. This analysis includes
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“[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.
Here, claim 1 requires the data in the “file comprising a sequence
read” to be “obtained from a nucleic acid sample that has been enriched by
hybridization to a plurality of capture sequences.” Claim 1, step (a). The
Specification states that “[t]arget enrichment methods . . . isolate from [a]
sample DNA only the fragments that match probes designed to target a suite
of genomic regions of interest.” Spec. 1:6–9. Thus, the data analyzed in the
claimed method is derived from genomic DNA that has been treated so that
it includes a higher (enriched) relative amount of DNA from a region of
interest, as compared to other regions of the genome.
But “limiting the use of an abstract idea to a particular technological
environment” is not enough for patent eligibility. Alice, 573 U.S. at 223
(internal quotation marks omitted). Similarly here, limiting the type of DNA
sequence data used in the claimed method to DNA sequence data derived
from a certain region of a certain genome is not enough to integrate the
recited abstract idea into a practical application. See 84 Fed. Reg. at 55 (one
“example[] in which a judicial exception has not been integrated into a
practical application” is when “[a]n additional element . . . link[s] the use of
a judicial exception to a particular technological environment or field of
use.”).
Claim 1 also states that the method is “computer-implemented” in the
preamble and “us[es] a computer” in step (b)(ii). However, the claim
requires only a generic “file” and “computer” to carry out the recited
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functions; it does not recite any specific hardware or software configuration
for doing so. Consistent with claim 1, the Specification states that “[t]he
above-described method can be implemented on a computer. In certain
embodiments, a general-purpose computer can be configured to a functional
arrangement for the methods and programs disclosed herein.” Spec. 20:4–6.
The Specification describes generic computer hardware and software, but
does not describe any unconventional computer functions required in order
to practice the claimed method. See id. at 20:6 to 22:5.
Thus, the claimed method does not use the recited abstract idea in
conjunction with a particular machine or manufacture, but instead simply
“includes instructions to implement an abstract idea on a computer, or
merely uses a computer as a tool to perform an abstract idea.” 84 Fed. Reg.
at 55. Because claim 1 recites an abstract idea and does not integrate the
abstract idea into a practical application, it is directed to an abstract idea.
Revised Guidance Step 2(B)
Finally, the Revised Guidance directs us to consider whether claim 1
includes “additional elements . . . [that] provide[] ‘significantly more’ than
the recited judicial exception.” 84 Fed. Reg. at 56. The Revised Guidance
states that an additional element that “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, . . . is indicative that
an inventive concept may not be present.” Id.
Here, as discussed above, claim 1 is directed to an abstract idea, and
includes only routine and conventional computer functions, recited at a high
level of generality, to implement that idea. Claim 1 does not recite, and the
Specification does not describe, any unconventional computer hardware or
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software as being necessary for the claimed method. Nor does the claim
include, for example, any unconventional data gathering steps or other
unconventional subject matter. See id.
Therefore, claim 1 requires using only a generic computer system, and
“the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. at
223. The combination of elements recited in the method of claim 1 does not
amount to significantly more than the judicial exception itself, and under 35
U.S.C. § 101 the claimed method is ineligible for patenting.
Appellant’s Arguments
Appellant argues that the Revised Guidance “set forth three groupings
of abstract ideas . . . (a) Mathematical concepts; (b) Certain methods of
organizing human activity; and (c) Mental processes.” Reply Br. 3.
Appellant argues that “[t]he Examiner’s Answer does not state whether the
claim limitations recite an abstract idea that falls within grouping (a) or
another grouping.” Id. at 4.
The Examiner, however, stated that “[t]he judicial exception is . . .
considered to be in the category of Mental Processes.” Ans. 5. The Examiner
therefore identified one of the categories of abstract ideas that are identified
in the Revised Guidance.
Appellant argues that “[a] claim is not ‘directed to’ an abstract idea if
the claim is directed to a specific method or means that improves a relevant
computer-related technology.” Appeal Br. 7, citing Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016); McRO, Inc., v. Bandai Namco
Games America Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). Appellant
argues that, by “tak[ing] advantage of additional information available from
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the design of the target enrichment panel used to produce the sequence
reads,” the claimed method “addresses an identified problem with general
purpose aligners used to align sequence data, namely longer processing
times and reduced accuracy of tagging.” Id. at 8. Appellant argues that,
“[l]ike McRO, the rejected claims recite a specific set of rules or steps
implementing a ‘process specifically designed to achieve an improved
technological result in a conventional industry.’” Id. at 9.
We do not agree that instant claim 1 is analogous to the invention
claimed in McRO. Rather, “[t]he claims here are ineligible because their
innovation is an innovation in ineligible subject matter.” SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). As in SAP, “the
advance lies entirely in the realm of abstract ideas, with no plausibly alleged
innovation in the non-abstract application realm. An advance of that nature
is ineligible for patenting.” Id.
The SAP court distinguished that case from McRO as follows:
The claims in McRO were directed to the creation of something
physical—namely, the display of “lip synchronization and
facial expressions” of animated characters on screens for
viewing by human eyes. [McRO, 837 F.3d] at 1313. The
claimed improvement was to how the physical display operated
(to produce better quality images), unlike (what is present here)
a claimed improvement in a mathematical technique with no
improved display mechanism.
Id. at 1167. The same distinction holds true here: Appellant claims an
improved mathematical technique for analyzing DNA sequence data, with
no creation of something physical like an improved display mechanism.
Therefore, McRO does not support the patent eligibility of Appellant’s
claims.
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Appellant also argues that “the claimed methods employ additional
information available from the design of the target enrichment panel used to
produce the sequence reads. . . . This is the same type of improved computer
functioning as relied upon in Enfish.” Reply Br. 5. Appellant argues that the
claimed method’s “dramatic reduction in computing time” is an
“improvement in the functioning of a computer in performing the
assignment of a sequence read to a genomic location [that] means the claim
is not directed to an abstract idea.” Id.
We do not agree that Enfish supports the patent-eligibility of the
instant claims. The SAP court noted the relevant distinction: in cases like
Enfish,
claims were patent-eligible because they were directed to
improvements in the way computers and networks carry out
their basic functions. . . . Here, the focus of the claims is not
any improved computer or network, but the improved
mathematical analysis; and indeed, the specification makes
clear that off-the-shelf computer technology is usable to carry
out the analysis.
SAP, 898 F.3d at 1168. The court concluded that the claims “thus fit into the
familiar class of claims that do not ‘focus . . . on [ ] an improvement in
computers as tools, but on certain independently abstract ideas that use
computers as tools.’” Id. (quoting Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016), alterations in original). The instant claims
are distinguished from Enfish for the same reasons set out in SAP.
Appellant argues that “[c]laim 8 is especially similar to the subject
matter of Enfish, and . . . the Office has not provided a meaningful
distinction.” Reply Br. 7. Appellant argues that “[c]laim 8 recites . . .
[‘]generating a data structure, wherein the capture sequences are stored in
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the data structure as values mapped by sequence keys . . . .’ This is akin
to the ‘self-referential table’ in Enfish” that was found to be an improvement
“leading the claims to be patent-eligible.” Id. at 7–8. “Claim 8 recites a data
structure, and the self-referential table in Enfish was also a data structure.”
Id. at 8.
This argument is also unpersuasive. Claim 8 reads:
8. The method according to claim 1, wherein step
i) further comprises generating a data structure, wherein the
capture sequences are stored in the data structure as values
mapped by sequence keys comprising subsequences of the
capture sequences, and the identifying step comprises
identifying one or more of the capture sequences as being a
match with the sequence read if the sequence read comprises
one or more sequence keys.
The Specification states that “[t]he term ‘data structure’ refers to a
way of organizing data that facilitates use of the data. A data structure may
include a table, such as a hash table, a database, an array, a set, a graph, etc.”
Spec. 7:17–19. The Specification also states that
a “sequence key,” in the context of a table, refers to a sequence
of elements, e.g., a sequence of nucleotides, that is used to
locate a value associated with the sequence key in the table.
Thus, a table storing a nucleotide sequence can map a sequence
key derived from the nucleotide sequence to the nucleotide
sequence. For example, the sequence key may be a subsequence
of the nucleotide sequence.
Id. at 7:20–24.
Thus, claim 8 requires generating a data structure; e.g., a table. The
table stores “capture sequences . . . as values mapped by sequence keys
comprising subsequences of the capture sequences;” i.e., the table associates
subsequences of the capture sequences (sequence keys) with the
corresponding capture sequences. And, in the identifying step, a capture
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sequence is identified as a match for a sequence read if the sequence read
comprises a subsequence of the capture sequence (i.e., a sequence key
corresponding to that capture sequence).
Read in light of the Specification, claim 8 requires generating a table
in which subsequences of capture sequences are associated with the
corresponding capture sequence, then using the subsequences in the table to
identify which, if any, capture sequence is a match for a sequence read.
Appellant has not persuasively shown that the data structure recited in
claim 8 is analogous to the self-referential table of Enfish. The court noted in
that case that “the claims are not simply directed to any form of storing
tabular data, but instead are specifically directed to a self-referential table
for a computer database.” Enfish, 822 F.3d at 1337. Here, by contrast, claim
8 does not even limit the recited “data structure” to a table, let alone a
specific type of table like the self-referential table of Enfish.
The Enfish court also noted that “the self-referential table functions
differently than conventional database structures.” Id. Here, Appellant has
not pointed to evidence showing that the data structure of claim 8 functions
differently, or is an improvement, from conventional means for identifying a
particular DNA sequence (e.g., a capture sequence) that shares a
subsequence with another DNA sequence (e.g., a sequence read). Therefore,
we are not persuaded that claim 8 is directed to patent-eligible subject matter
based on Enfish.
Finally, Appellant argues that “[t]he steps recited in the claims are not
well-understood, routine or conventional.” Reply Br. 9. “The pending claims
have been found to be novel and unobvious over the prior art. Since the
claimed method is patentable under 35 U.S.C. §102 and §103, then the
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combination of elements must not be well-understood, routine and
conventional to a skilled artisan.” Id. at 9–10.
This argument is unpersuasive. The relevant question is not whether
claim 1’s steps of data analysis were routine or conventional at the time the
invention was made. The question is whether the claim includes additional
elements, beyond the abstract idea, that are not well-understood, routine, and
conventional, and that transform the claim into a patent-eligible application
of the abstract idea. See Alice, 573 U.S. at 217 (If “the claims at issue are
directed to one of th[e] patent-ineligible concepts . . . 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.”).
Here, Appellant’s Specification itself provides evidence (as discussed
above) that carrying out the steps of the claimed method “require[s] no
improved computer resources [Appellant] claims to have invented, just
already available computers, with their already available basic functions, to
use as tools in executing the claimed process.” SAP, 898 F.3d at 1169–70.
For the reasons discussed above, we affirm the rejection of claims 1
and 8 under 35 U.S.C. § 101. Claims 2–7 and 9–20 were not argued
separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20

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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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED