Ex Parte Baym et al

Patent Trial and Appeal Board

Jan 30, 2017

13068301 (P.T.A.B. Jan. 30, 2017)

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.
13/068,301 05/06/2011 Michael Hartmann Baym IV 10-2-6 8744
71484 7590 02/01/2017
IV - SUITER SWANTZ PC LLO
14301 FNB PARKWAY , SUITE 220
OMAHA, NE 68154
EXAMINER
SEOH, MINNAH L
ART UNIT PAPER NUMBER
3686
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
file@suiter.com
srs@suiter.com
ISFDocketInbox@intven.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL HARTMANN BAYM,
RODERICK A. HYDE, JORDIN T. KARE,
EREZ LIEBERMAN, ELIZABETH A. SWEENEY, and
LOWELL L. WOOD, JR.
Appeal 2015-0046081
Application 13/068,301
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1,3,4, 11, 16, 22—
25, 28, 33, 34, 37, 41^13, 45, 57, 61, 65, 69, 71-73, 79, 84, 86, 90-93, 96,
101, 102, 105, 109-111, 113, 125, 129, 133, and 137-170. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
1 The Appellants identify Searete LLC as the real party in interest. Appeal
Br. 4.
Appeal 2015-004608
Application 13/068,301
The invention relates generally to evaluating biological samples.
Spec. 2,11. 3-11.
Claim 1 is illustrative:
1. A system, comprising:
an evaluation module for automatically evaluating a
biological sample acquired from a subject to determine a first
result of the evaluation, the first result of the evaluation including
a presence or an absence of at least one pathogen in the biological
sample, the evaluation module being located remotely from a
health care facility and including at least one of a test strip, a lab-
on-a-chip device, an assay, a lateral flow test strip, a colorimetric
test strip, a lateral flow colorimetric test strip, a transdermal
testing device, or a lancet;
a non-transitory electronic memory for queuing the first
result of the evaluation for transmission to an off-site entity; and
a benefit module for receiving a notification of a benefit
for the subject after queuing the first result of the evaluation for
transmission.
Claims 1, 3, 4, 11, 16, 22-25, 28, 33, 34, 37, 41^13, 45, 57, 61, 65,
69, 71-73, 79, 84, 86, 90-93, 96, 101, 102, 105, 109-111, 113, 125, 129,
133, and 137—70 are rejected under 35U.S.C. § 101 as reciting ineligible
subject matter.
Claims 1, 3, 4, 11, 16, 22-25, 33, 34, 37, 41, 42, 69, 71-73, 79, 84,
86, 90-93, 101, 102, 105, 109, 110, 138-45, 151, 153-60, and 166-70, are
rejected under 35 U.S.C. § 103(a) as unpatentable over McGlennen
(US 2006/0278242 Al, pub. Dec. 14, 2006) and Jung (US 2008/0183396
Al, pub. July 31, 2008).
Claims 28, 43,45, 57,61,65, 96, 111, 113, 125, 129, 133, 137, 146-
48, 150, 152, 161—63, and 165 are rejected under 35 U.S.C. § 103(a) as
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Application 13/068,301
unpatentable over McGlennen, Jung, and Walker (US 2006/0218011 Al,
pub. Sept. 28. 2006).
Claims 149 and 164 are rejected under 35 U.S.C. § 103(a) as
unpatentable over McGlennen, Jung, Walker, and Fuerst (US 2006/0036619
Al, pub. Feb. 16, 2006).
We REVERSE and enter a NEW GROUND OF REJECTION.
ANALYSIS
Patentable subject matter
We are persuaded by Appellants’ arguments that the claims recite
more than an abstract idea including limitations that transform the abstract
idea into eligible subject matter. Reply Br. 9—10.
The Supreme Court reiterated the two-step framework, set forth
previously in Mayo Collaborative Services v. Prometheus Labs., Inc., 132 S.
Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts.” Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134
S. Ct. 2347, 2355 (2014). The first step in that analysis is to “determine
whether the claims at issue are directed to one of those patent-ineligible
concepts.” Id. If so, the second step is to consider the elements of the
claims “individually and ‘as an ordered combination”’ to determine whether
the additional elements “‘transform the nature of the claim’ into a patent-
eligible application.” Id. (citing Mayo, 132 S. Ct. at 1291, 1297). In other
words, the second step is to “search for an ‘inventive concept’—i.e., an
element or combination of elements that is ‘sufficient to ensure that the
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Application 13/068,301
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. (citingMayo, 132 S. Ct. at 1294).
The Federal Circuit has further instructed that claims are to be
considered in their entirety to determine “whether their character as a whole
is directed to excluded subject matter.” McRO, Inc. v. Bandai Namco
Games America, Inc., 2016 WL 4896481 (Fed. Cir. September 13, 2016)
(quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)).
Each of independent claims 1 and 69 recite an evaluation module
“including at least one of a test strip, a lab-on-a-chip device, an assay, a
lateral flow test strip, a colorimetric test strip, a lateral flow colorimetric test
strip, a transdermal testing device, or a lancet.” The Specification describes
by example that “the evaluation module 110 can detect, in the biological
sample, the presence or absence of a pathogen.” Spec. 7,11. 12—14. The
Specification also describes by example that “the test strip changes color
which is easily detected.” Spec. 8,11. 23—24. Claims 1 and 69, thus, limit
their scope to the use of specific medical test devices, encompassing in their
scope a device that can detect color. As such, we find that the claims
prevent preemption of all automatic evaluation of biological samples,
because the claims are narrowly tailored to require specific technological
methods.
The Federal Circuit noted in McRO that the abstract idea exception
has been applied to prevent patenting of claims that abstractly cover results
where “it matters not by what process or machinery the result is
accomplished” (McRO, 2016 WL 4896481 at *8 (quoting OReilly v. Morse,
56 U.S. (15 How.) 62, 113 (1854))). In the case before us, claims 1 and 69
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Appeal 2015-004608
Application 13/068,301
recite limitations for queueing for transmission and receiving of data, which
are functions of a general-purpose computer. But the claims also require the
use of a machine that can, for example, detect color or other indicators
output by the specific medical test technologies claimed. It is clear that the
claims require a specific claimed medical test device that improves “the
relevant technology” of evaluating biological samples using an automated
evaluation module to evaluate information from the claimed, prior-art
medical test devices, which is an improvement over requiring a human to
interpret the color of a test strip, for example. (Id.). The claims, therefore,
do not recite an abstract idea, because they improve an existing
technological process of using test strips and similar medical test devices.
For these reasons, we reverse the rejection of claims 1,3,4, 11, 16,
22-25, 28, 33, 34, 37, 41^13, 45, 57, 61, 65, 69, 71-73, 79, 84, 86, 90-93,
96, 101, 102, 105, 109-11, 113, 125, 129, 133, and 137-70 under 35 U.S.C.
§101.
Rejections under 35 U.S.C. § 103(a)
We begin by construing the meaning of independent claims 1 and 69,
which each recite “an evaluation module for automatically evaluating a
biological sample ... the evaluation module being located remotely from a
health care facility.” During prosecution the PTO gives claims their
“broadest reasonable interpretation consistent with the specification.” In re
Hyatt, 211 F.3d 1367, 1372, (Fed. Cir. 2000).
Appellants do not define or limit the meaning of “located remotely,”
so we rely on the ordinary and customary meaning of “remote,” which is
“far removed in space, time, or relation.” Merriam-Webster Online
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Appeal 2015-004608
Application 13/068,301
Dictionary, http://www.merriamwebster.com/dictionary/remote (last
viewed Jan. 24, 2017).
Appellants specifically define “health care facility” in that Appellants’
Specification states “[i]n the context of the present disclosure, a ‘health care
facility’ includes any location where the evaluation of biological samples is
performed.” Spec. 8,11. 3—7.
Consistent with Appellants’ Specification, we construe the evaluation
module to evaluate the biological sample, and, thus, is the location for the
evaluation. In support of the language of claim 1, Appellants cite Figure 1
(Appeal Br. 5; see also Spec. 8,11. 14—20), which shows an embodiment
where a claimed test strip is within the evaluation module, as shown below:
ioo
i
.[ smart test strip
I
ISO OEfiERT
mooule
! 1® OFf'SITE
UfcTlTV
j RECEIVING
} jWOOUtX
} r ~
j j 164 O&T.aMSE.
f 1_____________I
Appellants’ Figure 1, showing test strip 112 within the
evaluation module 110, which is thus the location of the
evaluation of the biologic sample.
Claims 1 and 69, thus, recite, in light of Appellants’ definition and the
ordinary and customary meaning of “remote,” automatically evaluating a
biological sample, in a location far removed from any location where
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Application 13/068,301
biological samples are evaluated. The place where the biological sample is
evaluated must, therefore, be at a place different from where the sample is
evaluated, thus, making the claim impossible to meet. This is because the
definition of “health care facility” that encompasses the location for
evaluating samples, that must be separate from where the samples are
evaluated, leads to a logically non-sensical result: the claimed evaluation
module must be remote from itself.
The Examiner correctly pointed this out, stating “by definition a
remote testing site using Appellant’s own recited system cannot exist.”
Answer 7. Responding to Examiner’s observation, Appellants state
“[according to the Examiner's interpretation, virtually any location on earth
might be interpreted as a ‘health care facility.’” Reply Br. 12. We disagree
with Appellants, because a proper construction of claims 1 and 69 means
just the opposite: no health care facility/evaluation location meets the claim
language, because the claim language is impossible to meet.
Where claims do not particularly point out and distinctly claim the
invention as required by the second paragraph of 35 U.S.C. § 112, a § 103
rejection of the claims must be reversed as impermissibly involving
speculative assumptions as to the meaning of the claims. In re Steele, 305
F.2d 859, 862—63 (CCPA 1962). If no reasonably definite meaning can be
ascribed to certain terms in the claim, “the subject matter does not become
obvious - the claim becomes indefinite.” In re Wilson, 424 F.2d 1382, 1385
(CCPA 1970).
Therefore, we reverse pro forma the rejections under 35 U.S.C.
§ 103(a) of claims 1, 3, 4, 11, 16, 22-25, 28, 33, 34, 37, 41^13, 45, 57, 61,
65, 69, 71-73, 79, 84, 86, 90-93, 96, 101, 102, 105, 109-11, 113, 125, 129,
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Application 13/068,301
133, and 137—70. Using our authority under 37 C.F.R. § 41.50(b), we reject
independent claims 1 and 69 under 35 U.S.C. § 112, second paragraph, as
being indefinite, based on our inability to determine the precise meaning of
“an evaluation module for automatically evaluating a biological sample”
remote from the claimed health care facility that encompasses any location
where evaluating a biological sample is performed, in claims 1 and 69. We
also reject dependent claims 3,4, 11, 16, 22—25, 28, 33, 34, 37, 41—43, 45,
57, 61, 65, 71-73, 79, 84, 86, 90-93, 96, 101, 102, 105, 109-11, 113, 125,
129, 133, and 137—70, because they depend from the rejected independent
claims, and therefore recite the same indefinite language.
DECISION
We reverse the rejection under 35 U.S.C. § 101.
We reverse the rejections under 35 U.S.C. § 103(a) pro forma.
We enter a new ground of rejection of claims 1,3,4, 11, 16, 22—25,
28, 33, 34, 37, 41^13, 45, 57, 61, 65, 69, 71-73, 79, 84, 86, 90-93, 96, 101,
102, 105, 109-11, 113, 125, 129, 133, and 137-70 under 35 U.S.C. § 112,
second paragraph, as indefinite.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2008). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 CFR § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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Appeal 2015-004608
Application 13/068,301
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner....
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record ....
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)(l)(iv).
REVERSED; 37 C.F.R, $ 41.50(b)
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