Ex Parte Friedlander et alDownload PDFPatent Trial and Appeal BoardMay 29, 201813491884 (P.T.A.B. May. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/491,884 06/08/2012 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. END920120066US2 8378 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 Appeal2017-007534 Application 13/491,884 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, 3, 5-7, and 9 (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 2017-007533, Application 14/476,234. 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. Appeal2017-007534 Application 13/491,884 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 12). 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 method of 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 performing the steps of: a) reading and identifying characteristics of the organism's medical history and background associated with a genetic sequence of an organism; b) receiving an input of rank of at least two identified characteristics associated with the genetic sequence of the organism; c) generating a hierarchy of ranked, identified characteristics based on the rank of the at least two identified characteristics associated with the genetic sequence of the organism; d) comparing the hierarchy of ranked, identified characteristics to a repository of reference genomes; and e) if at least one reference genome from the repository matches the hierarchy of ranked, identified characteristics, 2 Appeal2017-007534 Application 13/491,884 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 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 3 Appeal2017-007534 Application 13/491,884 (App. Br. 15-16.) not sending sequences of nucleotides that are the same in the genetic sequence of the organism and the at least one matched reference genome. Claims 1, 3, 5-7, and 9 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 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, certain information is removed, resulting in a compressed genome" and, therefore, "encompasses a judicial exception: an abstract idea" (Ans. 2; see also id. at 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---6). Appellants disagree. According to Appellants, their claims "recite[] elements/steps in addition to the judicial exception(s) that are [not] well-understood, purely conventional or routine in the relevant field" (App. Br. 11 ). In this regard, Appellants contend that Examiner failed to establish an evidentiary basis on this record to support a finding that, inter alia, "ranking characteristics in a 4 Appeal2017-007534 Application 13/491,884 hierarchy associated with an organism and [the use of] ... this ranking of characteristics to find a reference genome and generate surprisal data" was well-understood, routine, and conventional activity in this field prior to Appellants' claimed invention (see App. Br. 12; see also id. at 12-13). Appellants further contend that "[t]here are no pending novelty or obviousness rejections" (App. Br. 11 ). In this regard, Appellants 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. (App. Br. 13; see also Reply Br. 5---6.) "Whether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination." Berkheimer v. 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 January 28, 2014. 5 Appeal2017-007534 Application 13/491,884 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, 3, 5-7, and 9 under 35 U.S.C. § 101 is reversed. REVERSED 6 Copy with citationCopy as parenthetical citation