Ex Parte Friedlander et alDownload PDFPatent Trial and Appeal BoardMay 29, 201814476234 (P.T.A.B. May. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/476,234 09/03/2014 80878 7590 Brown & Michaels (END) c/o Brown & Michaels, PC 118 North Tioga Street Suite 400 Ithaca, NY 14850 05/31/2018 FIRST NAMED INVENTOR Robert R. Friedlander 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. END920120066US3 3771 EXAMINER ZEMAN, MARY K ART UNIT PAPER NUMBER 1631 NOTIFICATION DATE DELIVERY MODE 05/31/2018 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): docket@bpmlegal.com lwood@bpmlegal.com twood@bpmlegal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT R. FRIEDLANDER and JAMES R. KRAEMER (APPLICANT: International Business Machines Corporation) Appeal2017-007533 Application 14/476,234 1 Technology Center 1600 Before DONALD E. ADAMS, JAMES A. WORTH, and RICHARD J. SMITH, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This Appeal2 under 35 U.S.C. § 134(a) involves claims 1-13 (App. Br. 1; see Final Act. 1; Reply Br. 3 2). Examiner entered a rejection under 35 U.S.C. § 101. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 Appellants identify "International Business Machines Corporation" as the real party in interest (App. Br. 1 ). 2 This Appeal is related to Appeal 2017-007534, Application 13/491,884 (see App. Br. 1-2). 3 The Reply Brief is not paginated. Therefore, all reference to page numbers of the Reply Brief refer to page numbers as if the Reply Brief was number consecutively beginning with the first page. Appeal2017-007533 Application 14/476,234 STATEMENT OF THE CASE Appellants disclose that "with the small amount of differences present between the genetic sequences from two humans, the 'common' or 'normally expected' sequences of nucleotides can be compressed out or removed to arrive at 'surprisal data' --differences of nucleotides which are 'unlikely' or 'surprising' relative to the common sequences" (Spec. i-f 11 ). Appellants' disclosure "relates to minimizing surprisal data generated when compared to a reference genome and more specifically to minimizing surprisal data through application of a hierarchy filter pattern" (Spec. i-f 2). Claim 1 is representative and reproduced below: 1. A computer program product for minimizing surprisal data representing an entire genome of an organism for compression and transmission, comprising a source computer having one or more processors and one or more computer-readable memories coupled to the one or more processors, compnsmg: one or more computer-readable storage devices, and program instructions, stored on the one or more storage devices, the program instructions comprising: program instructions to, at a source computer, read and identify characteristics of the organism's medical history and background associated with a genetic sequence of an orgamsm; program instructions to receive an input of rank of at least two identified characteristics of the organism's medical history and background associated with the genetic sequence of the organism; program instructions to generate a hierarchy of ranked, identified characteristics based on the rank of the at least two identified characteristics of the genetic sequence of the organism; 2 Appeal2017-007533 Application 14/476,234 program instructions to compare the hierarchy of ranked, identified characteristics to a repository of reference genomes; and program instructions that if at least one reference genome from the repository matches the hierarchy of ranked, identified characteristics, program instructions to: i) storing the at least one matched reference genome in a repository; ii) breaking the at least one matched reference genome into pieces comprising nucleotides of the genetic sequence which comprises at least one gene, at least some of the pieces being associated with the identified characteristics; iii) storing the pieces which are associated with the identified characteristics in the repository; iv) combining the stored pieces of the at least one matched reference genome into a filter pattern; v) comparing pieces of the nucleotides of the genetic sequence of the organism which comprises at least one gene which correspond to the stored pieces of the at least one matched reference genome to the nucleotides of the filter pattern of the pieces of the at least one matched reference genome, to find differences where nucleotides of the genetic sequence of the organism which are different from the nucleotides of the at least one matched reference genome; vi) using the differences to create surprisal data representing an entire genome of the organism and storing the surprisal data in the repository, the surprisal data comprising a starting location of the differences within the reference genome, how the reference genomes were broken into pieces, a count of a number of differences at the location within the at least one matched reference genome and the nucleotides from the genetic sequence of the organism which are different from the nucleotides of the reference genome; and 3 Appeal2017-007533 Application 14/476,234 vii) transmitting to a destination, a compressed, minimized genome representing an entire genome by sending the surprisal data, an indication of the at least one matched reference genome, and how the reference genome were broken into pieces and not sending sequences of nucleotides that are the same in the genetic sequence of the organism and the at least one matched reference genome. (App. Br. 16-17.) Claims 1-13 stand rejected under 35 U.S.C. § 101. ISSUE Does the evidence of record support Examiner's finding that Appellants' claimed invention is directed to patent ineligible subject matter? ANALYSIS Examiner finds that Appellants' claimed invention is directed to a computer program product[] and computer systems for a method of compressing data representing the entire genome of an organism, wherein genome data is received, certain characteristics of the data are ranked, the genome is compared to a reference, and utilizing the reference, [wherein] certain information is removed, resulting in a compressed genome and, therefore, "encompasses a judicial exception: an abstract idea" (Ans. 2; see also id. at 2-3 (Examiner identifies the steps in Appellants' independent claims, which are abstract)). In addition, Examiner asserts that those elements of Appellants' claimed invention that are not abstract are "routine, well understood and conventional activit[ies]" (see Ans. 5). Examiner, however, failed to identify an evidentiary basis on this record to support this assertion. 4 Appeal2017-007533 Application 14/476,234 According to Appellants, their claims "recite[] one or more elements/steps in addition to the judicial exception(s) that add a feature that is more than well-understood, purely conventional or routine in the relevant field" (App. Br. 13; see also id. at 13-14). In this regard, Appellants contend that "[t]here are no pending novelty or obviousness rejections" (App. Br. 13). Appellants further contend that the distinguishing limitations [in their claims] are not generally known, are not routine and conventional, are not found in the cited references [previously relied upon in prior art rejections on this record4], and are not found in the alleged abstract idea. The distinguishing limitations constitute the "significantly more" than the abstract idea, and constitute the "significantly more" than the instruction to implement the abstract idea on a generic computer. Therefore, the claim[ s] include[] limitations not found in the alleged abstract idea, and those distinguishing limitations, which are not generally known, show that the claim is significantly more than the abstract idea and significantly more than just implementing the abstract idea on a generic computer. (Reply Br. 6.) "Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination." Berkheimerv. HP Inc., 881F.3d1360, 1369 (Fed. Cir. 2018). On this record, Examiner failed to establish an evidentiary basis to support a conclusion that elements of Appellants' claimed invention were well- understood, routine, and conventional in this field prior to Appellants' claimed invention. 4 See Office Action mailed December 17, 2015. 5 Appeal2017-007533 Application 14/476,234 CONCLUSION The evidence of record fails to support Examiner's finding that Appellants' claimed invention is directed to patent ineligible subject matter. The rejection of claims 1-13 under 35 U.S.C. § 101 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation