Ex Parte Brodio et al

Patent Trial and Appeal Board

Feb 3, 2017

13738078 (P.T.A.B. Feb. 3, 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.
13/738,078 01/10/2013 Jacob Brodio 8374-US 8179
120142 7590
Reches Patents
211 North Union Street
Suite 100
Alexandria, VA 22314
EXAMINER
MAY, ROBERT F
ART UNIT PAPER NUMBER
2154
NOTIFICATION DATE DELIVERY MODE
02/07/2017 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):
oren@i-p.co.il
mail@i-p.co.il
patents @ infinidat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACOB BRODIO, KARIEL SANDLER,
and CYRIL PLISKO
Appeal 2016-006218
Application 13/73 8,07 s1
Technology Center 2100
Before KRISTEN L. DROESCH, JOHN P. PINKERTON, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1—9, 15—19, and 24—28, which constitute all of the claims pending
in this application. Claims 10-14, 20-23, and 29-32 have been cancelled.
Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Infmidat Ltd. as the real party in interest. Br. 3.
Appeal 2016-006218
Application 13/738,078
THE INVENTION
The disclosed and claimed invention is directed to a system, method
and non-transitory computer readable medium for compressing genetic
information in a vast genetic information database. Abstract.
Claim 1, reproduced below, is illustrative of the claimed subject
1. A method for distributing genetic information from a vast
genetic information database, the method comprises:
compressing, by a main storage system, the vast genetic
information database to provide a compressed genetic
information database;
storing at the main storage system, the compressed genetic
information database;
receiving, by the main storage system, updates to the vast genetic
information database;
updating the compressed genetic information database;
generating, by the main storage system, different point in time
snapshots of the compressed genetic information database;
calculating differences between the different point in time
snapshots of the compressed genetic information database; and
transmitting the differences from the main storage system to at
least one secondary storage system that is accessible to a user;
wherein a size of the vast genetic information database exceeds
200 Terabytes.
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
matter:
REFERENCES
McKay et al.
Gleba et al.
Cardonha et al.
Givelberg et al.
US 2004/0148302 Al July 29, 2004
US 2004/0191788 Al Sept. 30, 2004
US 2013/0304391 Al Nov. 14, 2013
US 2014/0074904 Al Mar. 13, 2014
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REJECTIONS
Claims 1—9, 15—19, and 24—28 stand rejected under pre-AIA 35
U.S.C. § 112 second paragraph as being indefinite. Final Act. 2—3.
Claims 1, 5—9, 15, 19, 24, and 28 stand rejected under pre-AIA 35
U.S.C. § 103(a) as being unpatentable over Cardonha in view of McKay and
Givelberg. Final Act. 4—12.
Claims 2—4, 16—18, and 25—27 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Cardonha in view of McKay, Givelberg, and
Gleba. Final Act. 13—16.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.2
We are persuaded by Appellants’ argument that the Examiner erred in
concluding the claim limitation “vast genetic information database” was
indefinite. However, Appellants have not persuaded us that the Examiner
otherwise erred.
Section 112, Second Paragraph Rejections
Appellants argue the Examiner erred in finding the claim term “vast
genetic information database” indefinite. Br. 10. According to Appellants,
2 Rather than reiterate the entirety of the arguments of Appellants and the
positions of the Examiner, we refer to the Appeal Brief (filed Nov. 2, 2015);
the Final Office Action (mailed June 1, 2015); and the Examiner's Answer
(mailed Mar. 24, 2016) for the respective details.
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because the claim recites a “definition of what is considered a vast genetic
information database[:] ‘wherein a size of the vast genetic information
database exceeds 200 Terabytes,’” it is not indefinite. Id. (emphasis
omitted).
The Examiner concludes “the phrase ‘vast genetic information
database’ renders the claim indefinite because it is unclear the determining
factor as to what constitutes being a vast database versus not being a vast
database.” Final Act. 2—3. The Examiner also concludes the size limitation
in the claim is insufficient because it is written using the indefinite article a,
which does not sufficiently limit the scope of the claim:
Examiner respectfully disagrees; the claim that a size of the vast
genetic information database exceeds 200 Terabytes does not
explicitly define that the size necessarily always exceeds 200
Terabytes. The claims are read as written to understand that a
size could be one of many sizes of the vast genetic information
database where one of the many sizes exceeds 200 Terabytes, but
not all sizes necessarily do. Therefore, calling the genetic
information database a vast genetic information database is still
found to be indefinite because it is unclear the determining factor
as to what constitutes being a vast database, even though a size
of the many possible sizes of the genetic information database is
200 Terabytes.
Ans. 3.
“A claim is indefinite if, when read in light of the specification, it
does not reasonably apprise those skilled in the art of the scope of the
invention.” Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313,
1342 (Fed. Cir. 2003). “As the statutory language of ‘particularity] ’ and
‘distinctness]’ indicates, claims are required to be cast in clear—as opposed
to ambiguous, vague, indefinite—terms. It is the claims that notify the
public of what is within the protections of the patent, and what is not.” In re
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Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). “Reference to undefined
standards, regardless of whose views might influence the formation of those
standards, fails to provide any direction to one skilled in the art attempting to
determine the scope of the claimed invention.” Datamize, LLC v. Plumtree
Software, Inc., 417 F.3d 1342, 1352 (Fed. Cir. 2005). “At the same time,
this requirement is not a demand for unreasonable precision.” Packard, 751
F.3d at 1313.
We are persuaded by Appellants’ argument that claim 1 provides
sufficient notice of what is covered by the claim. Claim 1 recites that “a size
of the vast genetic information database exceeds 200 Terabytes.” Br. 18
(Claims App’x). Independent claims 153 and 24 contain a similar limitation.
See Br. 10, 19, 20. We disagree with the Examiner that there is an
ambiguity on the minimum size of the vast genetic information database.
Based on the words of the claims, it is clear that the vast genetic database
must exceed 200 Terabytes.
Accordingly, we are constrained on this record to reverse the
Examiner’s rejection of claims 1,15, and 24 as indefinite, along with the
rejections of dependent claims 2—7, 9, 16—19, and 25—28 as indefinite.
Appellants also argue the Examiner erred in finding the phrase “rate
that exceeds a maximal rate of transfer of information via the Internet,” as
recited in claim 8 is indefinite. Br. 10. Appellants argue the meaning of the
phrase “is clear [and] [i]t does not depend upon any fluctuating factors — the
maximal rate is the maximal rate of data transfer regardless of any temporal
3 Appellants incorrectly identify claim 11, which has been cancelled, instead
of claim 15. See Br. 10. We treat Appellants’ arguments as directed to
claim 15.
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factor. It is the highest transfer rate that can be obtained over the Internet —
and is a clear and self-explanatory term.” Id.
The Examiner concludes that “because the rate of transfer of
information via the Internet fluctuates based on a multitude of factors,” the
disputed limitation is indefinite. Final Act. 3. The Examiner further
determines various factors that can cause the maximal rate of transfer of
information via the Internet to fluctuate, “such as bandwidth, the number of
computers that share the Internet connection, and the quality and condition
of the wiring connecting the computer to the internet.” Ans. 4. The
Examiner further determines that “as technology improves with time, so will
the rate of transfer of information via the Internet as seen in the past couple
decades.” Id. Accordingly, the Examiner concludes that “the maximal rate
of transfer of information via the Internet cannot be defined as a constant
rate because it is dependent on so many factors that cause the rate to
change.” Id.
We are not persuaded by Appellants’ argument that the Examiner
erred. Instead, we agree with and adopt the Examiner’s findings of fact and
conclusions of law.
Accordingly, we sustain the Examiner’s rejection of claim 8 as
indefinite.
Claims 1, 2, 5, 7—9, 15, 16, 18, 19, 24, 25, 27, and28 (Section 103
Rejections)
Appellants argue because Cardonha teaches away from the claimed
invention, the Examiner erred in relying on Cardonha in rejecting the claims.
Br. 11—14. Specifically, Appellants argue “Cardonha teaches . . .
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compressing a genetic sequence or genome of a certain organism by
comparing it to a reference genome” and that “comparison teaches away
from calculating differences between the different point in time snapshots of
the compressed genetic information database.” Br. 11—12 (citing Cardonha
30, 40, 41) (emphasis omitted). Appellants also argue “Cardonha
emphasizes that the compression of the data (a genetic sequence or genome
of a certain organism) is done without storing the data in memory” which,
therefore, “teaches away from the claimed invention as the claimed
invention includes multiple stages that are executed by the same main
storage system.” Id. at 12—13 (citing Cardonha 117) (emphases omitted).
We find Appellants have not established the prior art teaches away
from the claimed invention because Appellants have not demonstrated that
“a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be led
in a direction divergent from the path that was taken by the applicant.” In re
Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
The sections cited by Appellants, which discuss a preferred
embodiment, “do[] not teach away. . . [as they] merely expresses a general
preference for an alternative invention but do[] not ‘criticize, discredit, or
otherwise discourage’ investigation into the invention claimed.” DePuy
Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed.
Cir. 2009) (quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)).
That stated preference in the prior art is insufficient to teach away from the
claimed invention. See id.', Fulton, 391 F.3d at 1201.
Appellants also argue the Examiner erred in finding McKay teaches
genetic information or a compressed genetic information database. Br. 13.
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Therefore, according to Appellants, McKay does not teach or suggest the
receiving, updating or generating steps recited in claim 1. Id.
The Examiner finds Cardonha teaches genetic information and a
compressed genetic information database. Final Act. 4—5. The Examiner
further finds that a person of ordinary skill in the art had a reason to apply
the teachings of McKay to the teaching of Cardonha. Id. at 7.
Nonobviousness cannot be established by attacking the references
individually when the rejection is predicated upon a combination of prior art
disclosures. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The
test for obviousness is not whether the claimed invention is expressly
suggested in any one or all of the references, but whether the claimed subject
matter would have been obvious to those of ordinary skill in the art in light
of the combined teachings of those references. In re Keller, 642 F.2d 413,
425 (CCPA 1981). Because Appellants argue the teachings of McKay alone
and not in combination with the teachings of Cardonha as applied by the
Examiner, we are not persuaded by Appellants’ argument that the Examiner
erred.
Finally, Appellants argue that “Givelberg does not cure the
deficiencies of McKay and Cardonha in relation to any of the independent
claims.” Br. 13. Because, as discussed previously, we are not persuaded by
Appellants’ arguments addressing the alleged deficiencies of McKay and
Cardonha, we are not persuaded by Appellants’ additional argument that the
Examiner erred.
Accordingly, we sustain the Examiner’s rejection of claim 1, along
with the rejection of independent claims 15 and 24, which are argued on the
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same grounds, and dependent claims 2, 5, 7—9, 16, 18, 19, 25, 27, and 28,
which are not separately argued. Br. 13—14.
Claims 3, 4, 17, and 26 (Section 103 Rejection)
Appellants argue the Examiner erred in finding Gleba teaches the
additional limitation recited in dependent claim 3. Br. 14—15. Appellants
quote Gleba paragraph 60 (relied on by the Examiner in the findings) and
then states as follows: “This statement [o]f Gleba is vague and does not
teach or suggest calculating the predefined codeword dictionary based upon
the vast genetic information database.” Id. (emphasis omitted).
We are not persuaded by Appellants’ argument that the Examiner
erred. Although the Appeal Brief includes a quotation of the claim, a brief
description of Gleba and a quotation of the relevant paragraph from Gleba,
Appellants’ substantive argument (Br. 15) amounts to little more than a
general denial that fails to address the Examiner's findings and is, therefore,
insufficient. See 37 C.F.R. § 41.37(c)(l)(iv) (“A statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim.”); In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (“[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art.”). For example, Appellants do not explain
why Gleba does not teach using the claimed codeword dictionary. Nor do
Appellants offer any evidence but instead, rely solely on attorney argument.
It is well settled that mere attorney argument and conclusory statements,
which are unsupported by factual evidence, are entitled to little probative
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value. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (attorney argument is not
evidence).
Accordingly, we sustain the Examiner’s rejection of claim 3, along
with the rejections of claims 17 and 26, which are argued on the same
grounds. Br. 14. Furthermore, we also sustain the Examiner’s rejection of
claim 4,4 for which substantially the same argument is made. Compare Br.
14—15 (claim 3 argument); with (claim 4 argument).
Claim 6 (section 103 Rejection)
Appellants argue the Examiner erred in finding Cardonha teaches the
star configuration recited in claim 6. Br. 16. Specifically, Appellants argue
“[t]he mere fact that Cardonha refers to a data processing system that may
include additional components (paragraph [0022]) does not teach or suggest
of transmitting the differences to multiple secondary storage systems that are
coupled in a star configuration.” Id. (emphasis omitted).
The Examiner finds “Cardonha teaches secondary storage systems
coupled in a star configuration by teaching a medium used to provide
communication links between various devices and computers connected
together within network data processing system 51.” Final Act. 9—10 (citing
Cardonha 119); see also id. at 10 (citing Cardonha ]ff[ 20, 32). In the
4 The only difference between claims 3 and 4 is the amount of the vast
genetic information database the codeword dictionary is based on. Claim 3
recites that the codeword dictionary be “based upon the vast genetic
information database,” while claim 4 recites that it is “based upon at least a
majority of the vast genetic information database.” Br. 18 (Claims App’x)
(emphasis added).
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Answer, the Examiner makes more detailed fact findings and provides
additional reasoning showing how Cardonha teaches or suggests the star
configuration. Ans. 7—8. The Examiner also points out that although
Appellants addressed paragraph 22 in the Appeal Brief, the Examiner relied
on paragraph 20 in the Final Action, which was not addressed by Appellants.
Id. at 7.
Because Appellants did not submit a reply brief, Appellants did not
address the additional fact finding and reasoning in the Answer. Moreover,
Appellants did not substantively address the Examiner’s factual findings
based on paragraph 20. Accordingly, we are not persuaded of error based on
Appellants’ argument because it does not address the factual findings and
reasoning relied on by the Examiner and, thus, does not adequately address
the rejection on appeal. Instead, we agree with the Examiner in finding the
prior art teaches this disputed element.
Accordingly, we sustain the Examiner’s rejection of claim 6.
DECISION
For the above reasons, we reverse the Examiner’s decisions rejecting
claims 1—7, 9, 15—19, and 24—28 under pre-AIA 35 U.S.C. § 112 second
paragraph as being indefinite.
For the above reasons, we affirm the Examiner’s decisions rejecting
claim 8 under pre-AIA 35 U.S.C. § 112 second paragraph as being
indefinite.
For the above reasons, we affirm the Examiner’s decisions rejecting
claim 1—9, 15—19, and 24—28 under pre-AIA 35 U.S.C. § 103.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED
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