Ex Parte Ecker et al

Patent Trials and Appeals Board

Mar 29, 2019

14047414 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/047,414 10/07/2013
58057 7590 04/02/2019
Casimir Jones, S.C.
2275 Deming Way, Suite 310
Madison, WI 53562
FIRST NAMED INVENTOR
David J. Ecker
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.
ISIS-13055/US-3/CON 9249
EXAMINER
WILDER, CYNTHIA B
ART UNIT PAPER NUMBER
1637
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
docketing@casimirjones.com
pto .correspondence@casimirjones.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID J. ECKER, STEVEN A. HOFSTADLER,
THOMAS A. HALL, and KRISTIN SANNES-LOWERY
Appeal2018-000304
Application 14/04 7 ,414 1
Technology Center 1600
Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
TA WEN CHANG, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL
This Appeal under 35 U.S.C. § 134(a) involves claims 1 and 37----67
(Final Act. 2 2). Examiner entered a rejection under 35 U.S.C. § 101. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify "Ibis Biosciences" as the real party in interest
(Appellants' May 9, 2017 Appeal Brief (App. Br.) 3).
2 Examiner's December 9, 2016 Final Office Action.
Appeal2018-000304
Application 14/047,414
STATEMENT OF THE CASE
Appellants' disclosure relates "to the field of nucleic acid analysis and
provides methods ... for this purpose when combined with mass
spectrometry" (Spec. 3 ,r 3).
Appellants' claim 1 is representative and reproduced below:
1. A method for analyzing a nucleic acid comprising the steps
of:
(a) obtaining a sample comprising nucleic acid for base
composition analysis;
(b) amplifying at least two overlapping nucleic acid sequences
of a region of said nucleic acid designated as a target for base
composition analysis to generate at least two amplification
products;
( c) employing a processor for determination of base
compositions of said at least two amplification products
wherein said processor comprises software that directs said
processor to calculate base compositions of said at least two
amplification products wherein said base compositions identify
the number but not the nucleic acid gene sequence order of A
residues, C residues, T residues, G residues and analogs thereof
in said amplification products;
( d) employing a processor for comparison of one or more of
said base compositions to reference base composition data for
said nucleic acid sequence, wherein said reference base
composition data comprises at least one database of base
compositions of overlapping amplification products on a non-
transitory computer readable medium wherein said base
compositions identify the number but not the nucleic acid gene
sequence order of A residues, C residues, T residues, G residues
and analogs thereof in a plurality of said overlapping
amplification products wherein said processor comprises
software that directs said processor to compare said base
3 Appellants' October 7, 2013 Specification.
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Application 14/047,414
compositions of said at least two amplification products with
said reference base composition data; and
( e) identifying the presence of a particular nucleic acid
sequence or variant thereof wherein a match between said base
compositions of said at least two amplification products and
said reference base composition data identifies the presence of a
particular nucleic acid sequence or variant thereof.
(App. Br. 30.)
Claims 1 and 37----67 stand rejected under 35 U.S.C. § 101.
ISSUE
Does the preponderance of evidence of record support Examiner's
finding that Appellants' claimed invention is directed to patent ineligible
subject matter?
PRINCIPLES OF LAW
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 long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "'[l]aws of nature, natural phenomena, and abstract
ideas"' are not patentable. E.g., Alice Corp. v. CLS Bank Int'!, 573 U.S.
208,216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's 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)). In accordance with that framework,
we first determine what concept 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
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risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
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, 69 (1972)). Concepts
determined to be patent eligible include concepts integrated into 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 (1853))); and manufacturing flour
( Gottschalk, 409 U.S. at 69 ( citing Cochrane v. Deener, 94 U.S. 780, 785
(1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
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."). Having
said that, the Supreme Court also indicated 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 Gottschalk and Parker); see, e.g., id. at 187 ("It is
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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 tum to the second
step of the Alice and Mayo framework, where "we must 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 (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).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (January 7, 2019) ("Revised Guidance"). Under that
guidance, we first look to whether the claim recites:
( 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. 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
look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that
are 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.
See 84 Fed. Reg. 51.
ANALYSIS
Applying the Revised Guidance to the facts on this record, we find that
Appellants' claims are directed to patent-ineligible subject matter. The Revised
Guidance instructs us first to determine whether any judicial exception to
patent eligibility is recited in the claim. The Revised Guidance identifies three
judicially-excepted groupings: (1) mathematical concepts, (2) certain methods
of organizing human behavior such as fundamental economic practices, and (3)
mental processes.
Examiner finds that Appellants' claims are drawn to a methods of
analyzing nucleic acid using "a computer, computer program or software
and mathematical calculations/algorithms to obtain sequence information"
(Ans. 4 5; see also id. at 4). More specifically, the method of Appellants'
claim 1 comprises the steps of:
( c) employing a processor for determination of base
compositions of said at least two amplification products
wherein said processor comprises software that directs said
processor to calculate base compositions of said at least two
amplification products wherein said base compositions identify
the number but not the nucleic acid gene sequence order of A
4 Examiner's August 10, 2017 Answer.
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residues, C residues, T residues, G residues and analogs thereof
in said amplification products.
(see App. Br. 30.) We note, however, that limiting an abstract idea to a
particular technological environment, such as a computer, does not confer
patent eligibility. Alice, 573 U.S. at 222. See also Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017)
(Collecting data, without more, is an abstract idea); Elec. Power Grp. LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) ("[A]nalyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, [are] essentially mental processes within the
abstract-idea category").
( d) employing a processor for comparison of one or more of
said base compositions to reference base composition data for
said nucleic acid sequence, wherein said reference base
composition data comprises at least one database of base
compositions of overlapping amplification products on a non-
transitory computer readable medium wherein said base
compositions identify the number but not the nucleic acid gene
sequence order of A residues, C residues, T residues, G residues
and analogs thereof in a plurality of said overlapping
amplification products wherein said processor comprises
software that directs said processor to compare said base
compositions of said at least two amplification products with
said reference base composition data.
(see App. Br. 30.) Manipulating data, without more, is a mental process.
Intellectual Ventures I, 850 F.3d at 1340; see also Digitech Image Techs.,
LLC. v. Elecs. For Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)
("Without additional limitations, a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible"); Elec. Power Grp. LLC v. Alstom S.A.,
830 F.3d 1350, 1353-54 (Fed. Cir. 2016) ("[A]nalyzing information by steps
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people go through in their minds, or by mathematical algorithms, without
more, [are] essentially mental processes within the abstract-idea category").
For the reasons discussed above, the method of Appellants' claim 1
recites a mental process, which is an abstract idea (see Final Act. 4
(Examiner finds that Appellants' claims are "directed to an abstract idea
which is a judicial exception")).
Having determined that Appellants' claim 1 is directed to a judicial
exception, the Revised Guidance directs us to next consider whether the
claims integrate the judicial exception into a practical application, the second
step of the analysis. On this record, Appellants' claim 1 comprises the step
of:
(a) obtaining a sample comprising nucleic acid for base
composition analysis;
(b) amplifying at least two overlapping nucleic acid sequences
of a region of said nucleic acid designated as a target for base
composition analysis to generate at least two amplification
products;
( c) employing a processor for determination of base
compositions of said at least two amplification products
wherein said processor comprises software that directs said
processor to calculate base compositions of said at least two
amplification products wherein said base compositions identify
the number but not the nucleic acid gene sequence order of A
residues, C residues, T residues, G residues and analogs thereof
in said amplification products; and
( e) identifying the presence of a particular nucleic acid
sequence or variant thereof wherein a match between said base
compositions of said at least two amplification products and
said reference base composition data identifies the presence of a
particular nucleic acid sequence or variant thereof.
(App. Br. 30.)
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Those of ordinary skill in this art would have recognized that the steps
of obtaining a sample, preparing the sample (e.g., amplifying selected
nucleic acid targets for base composition analysis), and using a processor to
determine base composition of amplification products are simply
insignificant extra-solution data collection steps that neither add
significantly more than the abstract idea or integrate the abstract idea into a
practical application. See Mayo 566 U.S. at 79.
Those of ordinary skill in this art would have also recognized that
comparing sequences is nothing more than a mental process that can be
performed in one's mind or with the assistance of a pen and paper. See
Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015)
("Courts have examined claims that required the use of a computer and still
found that the underlying, patent-ineligible invention could be performed via
pen and paper or in a person's mind"); see also Elec. Power Grp., 830 F.3d
at 1353-54 (Analyzing information by steps people go through in their
minds, or by mathematical algorithms, do not amount to significantly more
than the abstract idea because they are insignificant post-solution activities).
Therefore, we conclude that the ineligible subject matter in Appellants'
claim 1 is not integrated into a practical application.
Having determined that the judicial exception is not integrated into a
practical application, the Revised Guidance requires us to evaluate the
additional elements individually and in combination to determine whether
they provide an inventive concept, such as a specific limitation beyond the
judicial exception that is not well-understood, routine, conventional in the
field, or simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
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the judicial exception. See 84 Fed. Reg. 51. In this regard, we note that
Appellants' method comprises the steps of: "(a) obtaining a sample
comprising nucleic acid for base composition analysis" and "(b) amplifying
at least two overlapping nucleic acid sequences of a region of said nucleic
acid designated as a target for base composition analysis to generate at least
two amplification products" (App. Br. 30). As Examiner explains, however,
Taylor5 and Sampath 6 make clear this steps are conventional in this art and
represent nothing more than insignificant pre-solution activity (see Final
Act. 6). "Purely 'conventional or obvious' '[pre]-solution activity' is
normally not sufficient to transform an unpatentable law of nature into a
patent-eligible application of such a law." Mayo 566 U.S. at 79 (quoting
Flook, 437 U.S. at 590). Therefore, we conclude that Appellants' claim 1
does not include an inventive concept.
For the foregoing reasons, we are not persuaded by Appellants'
contention "that the present claims clearly provide a new and useful
'application' of an idea, and are clearly more than [a] 'mere recitation of a
generic computer"' (App. Br. 14; see also id. (Appellants contend that their
"claims, as a whole are not directed to an abstract idea, but rather a method
of generating and analyzing biological materials" and "recite non-routine
5 Taylor et al., The determination of complete human mitochondrial DNA
sequences in single cells: implications for the study of somatic
mitochondrial DNA point mutations, 29 NUCLEIC ACIDS RESEARCH 1-8
(2001).
6 Sampath et al., US 2006/0259249 Al, published Nov. 16, 2006.
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subject matter that is much more than an abstract idea")). For the same
reasons, we are not persuaded by Appellants' contention that their
claims expressly provide methods for amplifying and analyzing
overlapping sequences of a region of a nucleic acid of use in
identifying the presence of the specific nucleic acid. Thus,
[ Appellants contend, their] ... claims involve transformation of
physical materials ( amplifying at least two overlapping nucleic
acid sequences to generate at least two amplification products)
... [and] [a]s such, the claims, as a whole are not directed to an
abstract idea, but rather a method of generating and analyzing
biological materials.
(App. Br. 14.)
"[S]imply implementing a mathematical principle on a physical
machine, namely a computer, [is] not a patentable application of that
principle." Mayo, 566 U.S. at 84. Therefore, we are not persuaded by
Appellants' contention that their claims "are expressly tied to a particular
machine i.e., a processor" (App. Br. 15 (emphasis omitted)).
"[T]he prohibition against patenting abstract ideas 'cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment' or adding 'insignificant postsolution activity."'
Bilski, 561 U.S. at 610-11, quoting Diehr, 450 U.S. at 191-92. Therefore,
we are not persuaded by Appellants' field of use contentions (see App. Br.
15).
Further, a difference exists between patent ineligible claims, as here,
that focuses "on asserted advances in uses to which existing computer
capabilities could be put" and patent eligible claims that focus "on a specific
improvement ... in how computers could carry out one of their basic
functions of storage and retrieval of data." Electric Power Group, 830 F.3d
at 1354 (discussing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36
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(Fed. Cir. 2016); see also Research Corp. Technologies, Inc. v. Microsoft
Corp., 627 F.3d 859, 865 (Fed. Cir. 2010) ("[H]igher quality halftone
images [ were produced] while using less processor power and memory
space."). Therefore, Appellants' contentions relating to Enfzsh, DDR
Holdings, LLC v. Hotels.com L.P., 773 F.3d 1245 (Fed. Cir. 2014), Bascom
Global Internet Serv., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016), and McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299
(Fed. Cir. 2016) are not persuasive (see App. Br. 15-17; Reply Br. 2-3).
In contrast to Appellants' claimed invention, "the claims at issue [in
Enfzsh] focused not on asserted advances in uses to which existing computer
capabilities could be put, but on a specific improvement-a particular
database technique-in how computers could carry out one of their basic
functions of storage and retrieval of data." Electric Power Group, 830 F.3d
at 1354. Further, as Appellants recognize, in contrast to Appellants' claimed
invention, the invention claimed in DDR Holdings overcame "a problem
specifically arising in the realm of computer networks" (see App. Br. 15).
The Court in DDR Holdings determined that the invention was "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks" and that the claimed invention
did not simply use computers to serve a conventional business purpose.
DDR Holdings, 773 F.3d at 1257. Similarly, the claims in Bascom provided
a software solution applicable to solve a problem specific to the software-
based environment of the internet. See Bascom, 827 F.3d 1343--45, 1350-
51. Thus, notwithstanding Appellants' contentions to the contrary, in
contrast to the claims in each of Enfzsh, DDR Holdings, and Bascom,
Appellants' claimed invention relates to the patent ineligible use to which
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existing computer capability could be put. Further, unlike the claims on this
record, "[t]he claims in McRO were not directed to an abstract idea"; to the
contrary, "the claimed improvement [was] allowing computers to produce
'accurate and realistic lip synchronization and facial expressions in animated
characters' that previously could only be produced by human animators."
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1094 (Fed. Cir.
2016) (internal citation omitted).
Lastly, we note that "[ w ]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015). "Where a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo[/Alice] framework,
as they are in this case, preemption concerns are fully addressed and made
moot." Id. Therefore, we are not persuaded by Appellants' contentions
regarding preemption (Reply Br. 5).
CONCLUSION
The preponderance of evidence of record supports Examiner's finding
that Appellants' claimed invention is directed to patent-ineligible subject
matter. The rejection of claim 1 under 35 U.S.C. § 101 is affirmed. Claims
37----67 are not separately argued and fall with claim 1.
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).
AFFIRMED
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