Ex Parte Bandic et al

Patent Trial and Appeal Board

Apr 30, 2018

13036783 (P.T.A.B. Apr. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/036,783 02/28/2011
7590 04/30/2018
MySkin, Inc.
123 Town Square Place, Suite 324
Jersey City, NJ 07310
FIRST NAMED INVENTOR
Jadran Bandic
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
SKIN-0025-UOl 5588
EXAMINER
JANG, CHRISTIAN YONGKYUN
ART UNIT PAPER NUMBER
3735
MAILDATE DELIVERY MODE
04/30/2018 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 JADRAN BANDIC, DJURO KORUGA,
SAVA MARINKOVICH, and RAHUL MEHENDALE
Appeal2016-004417
Application 13/036,783
Technology Center 3700
Before STEVEN D.A. MCCARTHY, MICHELLE R. OSINSKI, and
PAUL J. KORNICZKY, Administrative Patent Judges.
KORNICZKY, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2016-004417
Application 13/036,783
STATEMENT OF THE CASE
Appellants Jadran Bandic et al. 1 appeal under 35 U.S.C. § 134(a) from
the Examiner's decision, as set forth in the Final Office Action dated
February 27, 2015 ("Final Act.") and the Advisory Action dated April 28,
2015 ("Adv. Act."), rejecting claims 27-34 under 35 U.S.C. § 101 because
the claimed invention is directed to patent-ineligible subject matter. 2 We
have jurisdiction under 35 U.S.C. § 6(b ). A hearing was held on April 17,
2018.
We REVERSE.
THE CLAIMED SUBJECT MATTER
The claims are directed to an analytic method of tissue evaluation.
Claim 2 7, the only independent claim on appeal, is reproduced below with
additional bracketed claim lettering to identify the individual limitations for
ease of reference:
27. A method for characterizing an epidermis of a person, the
method comprising:
[a] subjecting a first sublayer of the epidermis of the
person to optomagnetic fingerprinting, yielding first wavelength
difference-intensity data to characterize the first sublayer;
[b] subjecting a second sublayer of the epidermis of the
person to optomagnetic fingerprinting, yielding second
wavelength difference-intensity data to characterize the second
sublayer;
[ c] comparing the first wavelength difference-intensity
data to wavelength difference-intensity data of other persons
from the first sublayer of the epidermis of the other persons;
Appellants identify MySkin, Inc. as the real party in interest. Appeal
Brief, dated July 28, 2015 ("Appeal Br."), at 2.
2 Claims 1-26 are cancelled. Appeal Br. 14 (Claims App.).
2
Appeal2016-004417
Application 13/036,783
[d] comparing the second wavelength difference-intensity
data to wavelength difference-intensity data of other persons
from the second sublayer of the epidermis of the other persons;
and
[ e] determining at least one of an age and a state of
hydration of the person using the steps of comparing.
DISCUSSION
The Rejection of Claims 27-34
as Directed to Non-statutory Subject Matter
The Supreme Court set forth a "framework for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66, 71-72 (2012)).
According to the Supreme Court's framework, we must first determine
whether the claims at issue are directed to one of those concepts (i.e., laws of
nature, natural phenomena, and abstract ideas). Id. If so, we must secondly
"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. The Supreme
Court characterizes the second step of the analysis as "a search for an
'inventive concept' - i.e., an element or combination of elements that is
'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."' Id. (alteration in
original). To transform an abstract idea into a patent-eligible concept, the
claims require "more than simply stating the abstract idea while adding the
words 'apply it."' Id. at 2357 (citations omitted).
3
Appeal2016-004417
Application 13/036,783
Alice Step One
With respect to the first step of the Alice analysis, the Examiner
initially states, without explanation, that claims 27-34 "are directed to an
abstract idea." Final Act. 2. The Examiner subsequently explains that "the
steps within the method of comparing and determining are directed to an
abstract idea as it is directed [to] comparing numerical data (i.e.
mathematical algorithms) to characterize an epidermis of a person." Adv.
Act. 2. The Examiner also states that "the abstract idea found within the
claim is the comparison and determining steps, which utilize a mathematical
algorithm." Answer, dated January 21, 2016 ("Ans."), at 2.
In response, Appellants assert that, "[i]n characterizing the claim as an
allegedly abstract idea," the rejection improperly "picks and chooses
fragments of the claim language without viewing the claim as whole."
Appeal Br. 7 (citing Diamond v. Diehr, 450 U.S. 175, 188 (1981) ("In
determining the eligibility of respondents' claimed process for patent
protection under § 101, their claims must be considered as a whole. It is
inappropriate to dissect the claims into old and new elements and then to
ignore the presence of the old elements in the analysis."); see also Parker v.
Flook, 437 U.S. 584, 594 (1978). Appellants also assert that the rejection
does "not allege that the claim itself was directed to an abstract idea, but
merely that the steps of comparing and determining were directed to this
abstract idea." Reply Brief, dated March 21, 2016 ("Reply Br."), at 7.
We agree with Appellants. The Examiner's asserted abstract idea is
based on "the steps within the [claimed] method of comparing and
determining" and ignores the claim as a whole. Adv. Act. 2; Ans. 2. The
asserted abstract idea only addresses claim limitations 27c-e which compare
4
Appeal2016-004417
Application 13/036,783
the first and second wavelength difference-intensity data to wavelength
difference-intensity data of other persons. It ignores the claim limitations
27a-b, which require subjecting the first and second sublayer of a person's
epidermis (i.e., physical objects) to optomagnetic fingerprinting. Claims do
not become patent-ineligible under§ 101 simply because they use
mathematical formulas. See Diehr, 450 U.S. at 187 ("a claim drawn to
subject matter otherwise statutory does not become nonstatutory simply
because it uses a mathematical formula"). In that sense, the Examiner's
explicit consideration of only a portion of the claim (i.e., that which is
considered mathematical algorithms) oversimplifies the analysis of patent
ineligibility under § 101.
Thus, the Examiner's does not articulate an abstract idea to which
claims 27-34 are directed.
Alice Step Two
With respect to the second step of the Alice analysis, the Examiner
states the "claim( s) does/ do not include additional elements that are
sufficient to amount to significantly more than the judicial exception
because the recited claims are not tied to any particular novel machine or
apparatus; in essence, the claims fail to add significantly more in its
implementation such that the abstract idea is transformed into a patent
eligible invention." Final Act. 2; Adv. Act. 2. The Examiner also states
"any use of a machine that may be inherent to the claims is not recited as a
non-obvious device, and would thus be merely a recitation of a device in an
insignificant extra-solution activity (e.g. data-gathering). Moreover, there is
no physical transformation by the recited methods." Ans. 3. In response to
5
Appeal2016-004417
Application 13/036,783
Appellants' argument that the Examiner "has failed to produce prior art for
optomagnetic fingerprinting, and therefore any device utilized would not be
considered part of an insignificant extra-solution activity," the Examiner
merely states that "optomagnetic fingerprinting itself is disclosed in
disclosures dating back to 2008, prior to the effective filing date of the
instant claims." Ans. 3.
The Examiner's analysis of the second step of the Alice analysis is
conclusory and unsupported. The Examiner does not persuasively explain
why or how subjecting the first and second sublayers of a person's epidermis
to optomagnetic fingerprinting recited in claim limitations 27a-b are steps of
"data gathering" or "insignificant post-solution activity." Similarly, the
Examiner identifies no support for the finding that "optomagnetic
fingerprinting itself is disclosed in disclosures dating back to 2008" or that
subjecting first and second epidermis sublayers is known in the art. Simply
because the additional element of optomagnetic fingerprinting may appear in
a prior disclosure is not adequate to show that the additional element would
not be an activity sufficient to transform a claim into a patent-eligible
application of an abstract idea. See Berkheimer v. HP Inc., 881 F.3d 1360,
1369 (Fed. Cir. 2018) (cautioning that "[t]he mere fact that something is
disclosed in a piece of prior art[] does not mean it was well-understood,
routine and conventional").
Thus, the Examiner does not properly consider the elements of claims
27-34, both individually and "as an ordered combination," to determine
whether the additional elements transform the Examiner's asserted abstract
idea into a patent-eligible application.
6
Appeal2016-004417
Application 13/036,783
DECISION
For the above reasons, the Examiner's rejection of claims 27-34
under 35 U.S.C. § 101 is REVERSED.
REVERSED
7